(UnrnrU ICam Btl^aal library 
 
Cornell University Library 
 KD 1384.A45H63 1890 
 
 3 1924 022 174 746 
 
The original of tliis book is in 
 tlie Cornell University Library. 
 
 There are no known copyright restrictions in 
 the United States on the use of the text. 
 
 http://www.archive.org/details/cu31924022174746 
 
A DIGEST 
 
 LAW AND PEACTICE 
 
 INCLUDING THE STATUTES AND ALL OASES DECIDED 
 
 FEOM THE PASSING OF THE STATUTE OF 
 
 MONOPOLIES TO OOTOBEE, 1890. 
 
 SECOND EDITION. 
 
 CLEMENT HIGGINS, Q.C., 
 
 RECOEDER OF BIRKENHEAD, M.A. CANTAB., PkSoW OF THE CHETHICAL SOCIETr, AND MEMBER OF 
 THE PHYSICAL SOCIETY OF LONDON; 
 
 G. EDWAKDES JONES, 
 
 BAERISTEK-AT-LAW, FORMEELT FEI/LOW OF PEMBROKE COLLEGE, CAMBRIDGE. 
 
 LONDON: 
 
 WILLIAM CLOWES AND SONS, Limited, 
 
 27, FLEET STREET. 
 
 1890. 
 
t^60^t{- 
 
 PRINTED BY "WILLIAM CLOWES AND SONS, LIMITED^ 
 STAMFORD STREET AND CHAKtNG CROSS. 
 
V "Wl 
 
 ®^is Work 
 
 MOST RESPECTFULLY DEDICATED 
 
 TO 
 
 THE HONOEABLE 
 
 SIR WILLIAM EOBEET GROYE. D.C.L., F.R.S, 
 
 FORMERLY ONE OF THE JUDGES OF 
 
 ^e Pig]^ Court of |ttstkf. 
 
PEE FACE. 
 
 EXTEACT FKOM THE PEEP ACE TO THE PIEST 
 EDITION. 
 
 Tms is essentially a book of reference. Its object is to supply 
 a reliable and exbaustive summary of the reported Patent Law 
 oases decided in English Courts of Law and Equity. No opinion 
 is expressed upon the cases digested, and no attempt is made to 
 reconcile conflicting decisions. All that the book contains rests 
 upon the authority of the Judges. . . . The chronological arrange- 
 ment of the cases gives a complete history of legal decision on 
 the several points of Law and Practice under which they are 
 arranged. This is the Author's justification for retaining some 
 few overruled cases, and for introducing several decisions upon the 
 same point where they are of different dates. 
 
 Clement Higgins. 
 June 1875. 
 
 PEEFACE TO THE SECOND EDITION. 
 
 The bearing of the sections of the Patents, Designs and Trade 
 Marks Act, 1883, on most questions concerning Patents is so 
 immediate and important that it has seemed to us right to state 
 the existing provisions of the Statute Law so as to be easily 
 referred to in connection with the cases relating to similar 
 portions of the subject. 
 
 Further, the Act having precluded the possibility of any logical 
 division of the subject other than that adopted by the Act itself, 
 it has seemed advisable to put the various divisions in their 
 
vi Preface to Second Edition. 
 
 alphabetical order, and thereby to avoid the necessity of a double 
 index with the accompanying trouble to the reader of a double 
 search. 
 
 The title has been altered to indicate the more extended scope 
 of the work, but subject to the above exceptions the old form of 
 the book has been retained, including the arrangement of cases in 
 chronological order ; and all new decisions up to date have been, 
 with such completeness as we could attain, incorporated under 
 their respective headings. 
 
 In giving the sections of the Patents Act, 1883, the words of 
 the amending Acts have been inserted in italics where it has 
 appeared possible to do so without leading to confusion. 
 
 Clement Higgots, 
 
 6, Pwper Buildings, 
 Temple. 
 
 G. Edwaedes Jones, 
 
 11, King's Bench WalJe, 
 
 Temple. 
 Nov. 5, 1890, 
 
LIST OF ABBEEYIATIONS. 
 
 A.&E. Adolphus and Ellis's EeportB. 
 
 A<pp. O. Law Reports Appeal Cases. 
 
 Am Arnold's Reports. 
 
 B.&Ad Barnewell and Adolphus. 
 
 B.&Ald Alderson. 
 
 B. & O. Cresswell. 
 
 Beav Beavan. 
 
 B.&8. Best and Smith. 
 
 Bing. N. C. Bingham's New Cases. 
 
 B. Mo B. Moore's Reports. 
 
 B. & F Bosanquet and Puller. 
 
 Bro.G.C... .. Brown's Chancery Cases. 
 
 B. & B Broderip and Bingham. 
 
 Bva.N.P. Buller's Nisi Prius. 
 
 Gamp Campbell. 
 
 G. &K. Carrington and Kirwan. 
 
 Gar. & M. Marshman. 
 
 G.&P Payne. 
 
 Garp. P. C. Carpmael's Patent Cases. 
 
 Gh. D Law Reports, Chancery Division. 
 
 G. B Common Bench. 
 
 C.B.jN.S. Common Bench, New Series. 
 
 G. L. Bep Common Law Reports. 
 
 G.&F. Clark and Finnelly'a Reports. 
 
 Goop Cooper's Reports. 
 
 Goop. G. G. Cooper's Chancery Cases. 
 
 GoryUm Coryton's Law of Patents. 
 
 Gr., M. & B Crompton, Meeson and Roscoe. 
 
 G. 8. Oases in the Court of Session. 
 
 Gurtis Curtis on the Law of Patents. 
 
 Dan. & L Danson and Lloyd. 
 
 Dav. PrG. Davies's Patent Cases. 
 
yiii List of Abbreviations. 
 
 Dec. of Crt. of Sesa Cases in Court of Session. 
 
 Ve G, F. & J. De Gex, Fisher andJones. 
 
 Be G. & J. and Jones. 
 
 I)e G.,M. &G , Maenaghten and Gordon. 
 
 De G., J. & S — , JoQes and Smale. 
 
 Dich , . . , Dickens's Eeports. 
 
 Dowl., OT D. P. C. Bowling's Reports. 
 
 Dow. & Low Bowling and Lowndes. 
 
 D.&B ■ Eylands. 
 
 Dr. & 8. Bmry and Smales. 
 
 East East's Eeports. 
 
 Eden Eden's Eeports. 
 
 Ell.&B Ellis and Blackburn. 
 
 E.,B.&E. .. .. '■ aiidEms. 
 
 E.&E. Ellis. 
 
 Eq^. Sep Equity Eeports. 
 
 Ex. Bep Exchequer Eeports. 
 
 G. & D Gale and Bavison's Eeports. 
 
 Giff. Giffard's Eeports. 
 
 Good. Ahst Goodeve's Abstract of Patent 
 
 Good ^ Patent Cases. 
 
 Godson Godson on Patents. 
 
 Griff. GriiBn's Patent Oases. 
 
 Hare Haie's Eeports. 
 
 H. Bl H. Blaokstone's Eeports. 
 
 II. & C Hurlstone and Coltinan. 
 
 H. & B. Horn and Hurlstone. 
 
 B. & M. Hemming and Miller. 
 
 S. & N. Hurstoue and Norman. 
 
 H. L. G. House of Lords Cases. 
 
 H.&W Harrison and Wollastnn. 
 
 Hind, on Pat Hindman.'h on Patents. 
 
 Holroyd Holroyd on Patents. 
 
 HoltN.P Holt's Nisi Prius Eeports. 
 
 Johns Johnson's Eeports. 
 
 Johnson's Pat. Man Patentees' Manual. 
 
 J. & H Johnson and Hemming. 
 
 Jur Jurist Eeports. 
 
 K & J. . . Kay and Johnston. 
 
 Keen Keen's Eeports. 
 
List of Abbreviations. ix 
 
 L. J. Ch Law Journal, Chancery. 
 
 Q.B.,oxK.B Queen's Bench (or King's). 
 
 0. F Common Pleas. 
 
 Exeh Exchequer. 
 
 F.G. — Privy Council. 
 
 L. R Eeports. 
 
 L. T. Times Eeports. 
 
 Lawaon Lawson's Patents, Designs and Trade Marks. 
 
 Land. Jour London Journal. 
 
 Moor. P. C Macrory's Patent ( 
 
 M. & O. . . . . Maonaghten and Gordon. 
 
 M. Dig Monthly Digest of Cases. 
 
 M.&W. Meeson and Welby's Eeports. 
 
 M. & Sc -. Moore and Scott's Eeports. 
 
 Marsh Marshall's Eeports. 
 
 Mer Merivale's Reports. 
 
 Mod Modern Eeports. 
 
 Moo. F.G Moore's Privy Council Cases. 
 
 ,N.8. (New Series). 
 
 Mur. & H. Murphy and Hurlstone. 
 
 M.&Cr Mylne and Craig. 
 
 N. G. Notes of Cases. 
 
 N. & P Neville and Perry. 
 
 N.M New Eeports. 
 
 Newton's Land. J. Newton's London Joui'nal. 
 
 Noy Noy's Eeports. 
 
 0. R Patent Office Eeports. 
 
 Par. Rep. Pat Parliamentary Eeports. 
 
 P. Wms Peere Williams's Eeports. 
 
 Ph Phillips's Reports. 
 
 Frac.Mech.J. Practical Mechanics' Journal. 
 
 Prerog. Court Prerogative Court. 
 
 Rep. Arts Repertory of Arts and Sciences. 
 
 Rom. Notes to Cases Eomilly's Notes to Cases. 
 
 Russ Eussell's Eeports. 
 
 Russ. & M. Eussell and Mylne. 
 
 Ry. & M. Eyaii and Moody. 
 
 S., M.& P Stuart, Milne and Peddie (Scotch). 
 
 Scott Scott's New Eeports, 
 
 Sim Simon's Reports. 
 
X List of Abbrevidfions. 
 
 Starlc Stai'key's Reports. 
 
 Swan Swanston's Eeports. 
 
 Taun Taunton's Eeports. 
 
 T, L. B Times Law Eeports. 
 
 T.M Term Eeports. 
 
 Tyr Tyrwhitt's Eeports. 
 
 Ves Vesey's Eeports. 
 
 V. & B. Vesey and Beamea's Eeports. 
 
 Webst. Webster Patent Oases. 
 
 West West's Eeports. 
 
 W.B Weekly Eeporter. 
 
 W., W. & D Wilmore, Wollaston and Davison. 
 
 Y. & G. Young and CoUyer's Eeports. 
 
TABLE OF OASES. 
 
 Name of Case. 
 
 Keference. 
 
 9 Eep. Alts, 103 ; 2 Carp. P. 0. 383 
 
 John, 169 
 
 6 App. C. 176; 29 W. E. 746 .. .. 
 
 L. E., 11 Ch. T>. 136 ; 40 L. T. Eep., 
 
 N. S. .')98 
 
 L. E., 11 Ch. D. 138; 40 L. T. Eep., 
 
 N". S. 599 
 
 L. E., 12Ch. D. 13 
 
 W.N. 1879, p. 8 
 
 L. E., 12 Ch. D. 15 ; 28 W. E. 85 ; 
 41 L. T. Eep., N. S. 361 
 
 29 L. T. Eep., N. S. 367 
 
 21 L. T. Eep. 38 ; 1 W. E. 259 .. 
 
 6 De G., M. & G. 420 ; 25 L. J, Ch. 
 456; 4 W. E. 473 
 
 Griff. 269 
 
 5 0. E. 345 
 
 5 0. E. 348 
 
 4 0. E. 535 
 
 Cit. 4 M. & Or. 511 ; 1 Web. P. C. 432 
 
 L. E., 1 P. C. 507; 4 Moo. P. 0. C, 
 JSr. S. 448 
 
 2 Griff. 3 
 
 3T. L. E. 655; 4 O. E. 377 .. .. 
 
 IC. B.551 
 
 4 O. E. 316 ; 5 0. E. 375. 538 ; W. N. 
 1890, p. 19 ; 7 0. E. 47 ; 38 W. E. 
 329 
 
 Page in Digest 
 where cited. 
 
 Abbott V. Williams . . 1837 
 Abel's Application 1876 . . 
 Adair's Patent 
 
 Adair v. Young 
 
 (V.-C. B.) 1879 
 
 (C. A.) 1879 
 
 (V.-C. B.) 1879 
 
 (V.-C. B.) 1879 
 
 (C. A.) 1879 
 
 Adams v. North British 
 Eailway Company 1873 
 
 Adams' Patent, In re . . 1853 
 
 Adamson's Patent, In re . . 
 1856 
 
 Ainaworth's Patent . . 
 
 Aire and Calder Works 
 and Walker's Applica- 
 tion 
 
 Airey's Application .. 
 
 Albo Carbon Light Com- 
 pany V. Kidd 
 
 Alcock's Patent, In re .. 
 
 1832 
 
 Allan's Patent, In re 
 
 1867 
 
 Allen's Patent 
 
 V. Doulton 
 
 ^llen V. Eawaon . . 1845 
 
 American Braided Wire 
 Company v. Thomson 
 
 345 (a) 
 
 43(e) 
 
 112 (m); 126 
 {a) 
 
 371 (y) 
 
 371 (y) 
 
 332 (it) 
 
 297 (ft) 
 
 161 (g) ; 332 
 
 7(/0 
 
 30(6) 
 237 (p) 
 
 58(a) 
 490 (y) 
 
 42(a!);51(») 
 538 (w) 
 
 40(3); 43 (o) 
 
 118 (»■) 
 
 27(e) 
 
 21(d) 
 
 276(10); 487 
 (2):503(/^ 
 
 324 (p); 357 
 (0; 392(a) 
 
Table of Cases. 
 
 Name of Case. 
 
 Page In Digest 
 where cited. 
 
 American Braided Wire 
 Oomp. V. Thomson (C. A.) 
 
 (H. ofL.) 
 Amies v. Kelaey .. 1852 
 
 Amory v. Brown 
 
 1869 
 
 Anderson and Anderson's 
 
 Application 
 Anderson and McKinnell's 
 
 Application 
 Anderson v. Patent Oxonite 
 
 Company 
 Anderton's Application . . 
 
 An glo - American Brush 
 Liglit Company v. 
 Crompton (0. A.) 
 
 Arkwright v. Nightingale 
 (N. P.) 1785 
 
 Arnold v. Bradbury . . 
 
 (V.-C.) 1871 
 
 V. ■ .. 
 
 (L. C.) 1871 
 
 Arnold's Patent 
 
 Aslienhurst's Patent, In re 
 1853 
 
 Ashworth's Patent .. 
 Ash worth v. Law (1890) . . 
 
 V. Roberts (1890) 
 
 Atherton's Application . . 
 Aube''s Patent, In re 1854 
 
 Automatic Weighing Ma- 
 chine Company v. Com- 
 bined Weighing and 
 Advertising Machine 
 Company 
 
 (0. A.) 
 Automatic Weighing Ma- 
 chine Company v. Inttr- 
 national Hygienic So- 
 ciety 
 =— •«. Knight 
 
 (C. A.) 
 
 ' Aveling v. Maolaren 
 Avery's Patent .. 
 
 44 Ch. D. 274 ; 5 0. R. 113, 696; 7 
 0. R. 152 
 
 6 0. R. 518 
 
 16 Jur. 1047; 22 L. J., Q. B. 84; 
 20 L. T. Eep. 115; 1 W. R. 54 .. 
 
 L. R., 8 Eq. 663; 38 L. J., Ch. 593 ; 
 17 W. E. 849; 20 L. T, Eep., 
 N. S. 654 
 
 7 0. R. 323 • .. 
 
 2 Griff. 23 
 
 30.R.279 
 
 2 Griff. 25 
 
 34 Ch. D. 152 ; 35 W. E. 125 ; 4 
 O. E. 27 ; W. N. 1886, p. 188 ; 56 
 L. J., Ch. 167 ; 55 L. T. 722 
 
 Dav. P. C. 37; 1 Web. P. C. 60 .. 
 
 24 L. T. Eep., N. S. 613; 19 W. E. 
 
 817 
 L. E., 6Ch. 706 
 
 2 Griff. 5 
 
 2 W. R. 3 ; 22 L. T. Eep. 109 
 
 2 Griff. 6 
 
 7 0. E. 231 
 
 W. N. 1890, p. 154 ; and 25 N. 0. Ill 
 
 6 0. E. 547 
 
 9 Moo. P. C. C. 43 
 
 6 0. R. 120,502; 61 L. T. 474; 42 
 Ch. D. 665 ; 58 L. J., Ch. 7U9 
 
 6 O. R. 367 . 
 6 0. R. 475 . 
 
 6 0. R. 113 ; W. N. 1888, p. 250 
 5 T. L. E. 359 ; 6 O. E. 297 . . 
 
 17 Ch. D. 139 (u.) 
 
 35 W. R. 541; 56 L. J., Ch. 586; 
 56 L. T. 324; W. N. 1887, p. 10 ; 
 4 O. E. 152 
 
 376(9); 377 
 (0 
 261 (6) 
 
 326 (x) 
 291 (fc) 
 
 421 (&) 
 
 8(m); 50 (i) 
 
 72(6) 
 
 58(6) 
 315 (d) 
 
 373(d); 421 
 (m) 
 356 (a) 
 
 356(a); 459 
 (3); 499(0 
 
 28(4) 
 
 57 ( «*) 
 
 12 (r) 
 219 (s') 
 324 
 38(e) 
 133 
 554 (e) 
 
 201 (») 
 201 (o) 
 
 366 (c*) 
 
 200 (m); 480 
 (n);544(/3 
 
 305 (p) 
 
 403 (g) 
 
Table of Cases. 
 
 Xlll 
 
 Name of Case. 
 
 EeftreDce, 
 
 Page in Digest 
 where cited. 
 
 Avery's Patent . . ,(C A.) 
 Axmann v. Lund . . 1874 
 
 Bacon v. Jones . . . . 1839 
 
 V. Spottiswoode 1839 
 
 Badham v. Bird 
 
 Badiache Aiiilin und Soda 
 Fabrik v. Dawson 
 
 V. Levinstein 
 
 (0. A.) 
 
 (H. of L.) 
 
 Bailey's Patent 
 
 '■ .. ..1884 
 
 Bailey v. Eoberton . . 
 
 (H. L.) 1878 
 
 Bailey D. Taylor ..1825 
 , Ex parte ..1872 
 
 Baillie v. Goodwin .. 
 Bainbridge «. Wigley 
 
 (N. P.) 1810 
 
 Baird v. Moule's Patent 
 Earth Closet Company 
 
 ». Neilson 
 
 (H. L.) 1842 
 
 Bairstow's Application . . 
 
 Bakewell's Patent, In re . . 
 1862 
 
 Ball's Patent, In re .. 
 
 (P. 0.) 1879 
 
 Ball V. Lelm 
 
 Bamlett v. Pioksley .. .. 
 
 36 Ch. D. 307; 4 O. E. 322; 36 
 W. R. 249; 56 L. J., Ch. 1007; 
 3 T. L. E. 404, 775 
 
 L. E. 18 Eq. 330 ; 43 L. J., Ch. 655 ; 
 22 W. E. 789 ; 31 L. T. Eep., N. S. 
 119 
 
 4My. &Cr. 433 
 
 1 Beav. 382 
 
 5 0. E. 238 
 
 6 0. E. 387 
 
 24 Ch. D. 156 ; 52 L. J.. Ch. 704 
 48 L. T. 822; 31 W. E. 913 
 W. N. 1883, 62 
 
 29 Ch. D. 366 ; 2 O. E. 73, 143 .. 
 
 12 App. C. 710 ; 4 O. E. 449 .. .. 
 
 Griff. 269 
 
 Griff. 253; 1 0. E. 1 
 
 L. E., 3 App. Cas. 1055 ; 38 L. T. 
 Eep., N. S. 854 : 27 W. B. 17 . . 
 
 lEuss. &M. 73 
 
 L. E., 8 Ch. 60 ; 42 L. J., Ch. 264 ; 21 
 "W". E. 31 ; 27 L. T. Eep., N. S. 430 
 
 3 0. E. 283 
 
 Par. Eep. Pat. 1829, p. 197 ; 18 Eep. 
 Arts, 127; 1 Carp. P. C. 270 .. 
 
 17 Ch. D. 139 (n) 
 
 8C1. &Ein. 726 
 
 5 0. E.286 
 
 15 Moo. P. C. C. 385 
 
 L. E., 4 App. Cas. 171 ; 48 L. J., 
 P. C. 24; 27 W.E.477 
 
 Times, April 14th, 1881 
 
 Griff. 40 
 
 279(^1); 403 
 (S) 
 
 91 (0; 547 
 O') 
 
 347 (i); 350 
 
 (2/) 
 350(«); 367 
 
 (9) 
 241 (61 ; 317 
 
 (ft); 393(d) 
 
 292 (a) ; 518 
 
 (V) 
 
 95 (e); 366 
 («) 
 
 298 (I*) ; 390 
 
 (P) 
 227(g); 435 
 
 (e);517(M): 
 
 543 (e); 575 
 
 («) 
 48 (Ji) 
 126 (6) 
 
 196(d); 255 
 (i); 415(6); 
 431 (z) ; 517 
 (0; 579(2) 
 
 Cited 368 (j) 
 
 60 (o) ; 81 (r) 
 
 8(m) 
 565 (2) 
 
 305 (p) 
 
 88(d) 
 
 49(e) 
 
 118 (p) ; 155 
 (0 
 140 (») 
 
 389 (g) 
 
 506 (o); 538 
 
XIV 
 
 Table of Cases. 
 
 Name of Ca&e. 
 
 Bancroft v. Warden ..1873 
 
 Barber v. Walduck . . 
 
 (N. P.) 1823 
 
 V. Grace . . . . 1847 
 
 Barkers. Shaw .. ..1823 
 
 Barlow v. Baylisa 
 
 Barnett v. Barrett's Screw 
 Stopper Company 
 
 Barney v. United Tele- 
 phone Company . . 
 
 Barrett and Elers, Limited 
 V. Day 
 
 Barrett v. Vernon 
 
 (V.-C. B.) 1876 
 Bate's Patent, In re ..1836 
 Bateman ». Gray ..1853 
 
 (3Sr. P.) 1853 
 
 Bateman's Patent, In re . . 
 1854 
 
 Bates and Bedgate 
 
 Ex parte 1869 
 
 Batley v. Kynock . . 1874 
 
 Eomilly's Notes to Cases, 103 .. .. 
 
 Cit. 1 C. & P. 567 : 1 Carp. P. C. 438. 
 Eep. under name of Barker v. Shaw, 
 Holroyd, Pat. 60; 1 "Web. P. C. 
 126 
 
 1 Exch. 339 ; 17 L. J., Exoh. 122 
 
 See Barber ». Walduck 
 
 Griff. 44 
 
 Griff. 47; 1 O. K. 9 .. 
 
 Page in Digest 
 wliere cited. 
 
 (V.-C. B.) 1875 
 
 Baxter's Patent, In re 1849 
 
 V. Combe 
 
 (M. K.) 1850 
 
 V. 
 
 (M. E.) 1851 
 
 Beanland's Patent .. 
 
 Beard v. Egerton . . 1846 
 
 V. ..1849 
 
 Beck's Patent, In re . . 1784 
 
 Beck and Justice's Patent 
 Beeaton v. Ford 
 
 Bell's Patent 
 
 Bell and Coleman's Patent 
 
 28 Ch. T>. 394; 52 L. T. 573; 33 
 W. E. 576; 2 O. E. 173 ; Griff. 48 
 
 43 Ch. D. 435; 7 0. E. 54 ; 38 W.E. 
 362 
 
 35 L. T. Eep., N. S. 755 ; 25 W. E. 
 343 
 
 1 Web. P. C. 7.39 (n.) 
 
 1 C. L. Eep. 512; 22 L. J., Exch. 
 290 
 
 Maor. P. C. 93 
 
 Macr. P. C. 116 
 
 L. E., 4 Ch. 577 ; 38 L. J., Ch. 501 ; 
 17 W. E. 900 ; 21 L. T. Eep., N. S. 
 410 
 
 L.E,,19Bq.229; 31 L. T. Eep., N. S. 
 573 ; 44 L. J., Ch. 89 
 
 L. E., 20 Eq . 632 ; 33 L. T. Eep., 
 
 N. S. 45 
 
 13Jur.593 
 
 llr. Ch. E. 284 
 
 3Ir. Ch. E.245 
 
 4 0. E. 489; 4 T. L. E. 30 .. .. 
 
 3 C. B. 97 ; 10 Jur. 643 ; 15 L. J., 
 C. P. 270 
 
 8 C. B. 165 ; 13 Jur. 1004 ; 19 L. J., 
 C. P. 36 ; M. Dig. 75 
 
 1 Bro. C. C. 578; 1 Web. P. C. 430 
 
 2 Griff. 10 .. .. 
 2 Coop. Ch. C. 58 
 2 Griff. 10 .. .. 
 Griff. 320 .. .. 
 
 154 (c) 
 273 (K) 
 
 187(e); 464 
 (w) 
 
 273 (J) 
 
 240 (0 
 
 549 (p) 
 
 549 (g) 
 
 555 (/) 
 
 196 («) 
 
 120 (y) 
 361 (a) 
 
 189 (i) 
 
 16(«) 
 
 55 (ft); 150 
 
 297 (/) 
 
 366(6*); 388 
 (?) 
 136 (v) 
 
 347 (ft) 
 340 (c) 
 
 127 Qi) 
 
 278 (d); 567 
 (A) 
 
 428 (m) ; 456 
 (x); 465 (z) 
 
 28 (m) ; 58 
 (/) 
 12 (s) 
 336" (ft) 
 14(d) 
 544 (A) 
 
TMe of Cases', 
 
 XV 
 
 Name of Case. 
 
 Reference. 
 
 Page In Digest 
 wbere cited. 
 
 BeU's Patent, In re ..1846 
 
 Bentley v. Fleming . . 
 
 (N. P.) 1844 
 
 V. Keighley ..1844 
 
 Berdan's Patent, In re .. 
 (M. E.) 1875 
 
 Bergman «. Maomillan .. 
 
 Berrington'a Patent 1852 
 
 Berry's Patent .. ..1850 
 Besseman v. Wright 1858 
 Bette V. Cleaver . . 1872 
 
 ■ V. CUfford 
 
 .1860 
 
 • V. De Vitre 
 
 (V.-C.) 1864 
 
 (V.-C.) 1865 
 
 (L. C.) 1868 
 
 (H. L.) 1873 
 -». GaUais.. ..1870 
 
 — V. Menzies 
 
 (V.-C.) 1857 
 
 (Q. B.) 1858 
 
 (Q. B.) 1859 
 
 (Ex. Ch.) 1860 
 
 (H. L.) 1862 
 
 ■ V. Neilaon 
 
 (V.-C.) 1865 
 
 (L. J.) 1865 
 
 (L. C.) 1868 
 
 lOJur. 363 
 
 1 C. &K. 587; 1 C. B. 479 .. .. 
 
 I D. & L. 944 ; 7 M. & G. 652 ; 8 Seott, 
 N. E. 372; 13 L. J., C. P. 167 
 
 L. E., 20 Eq. 346 ; 44 L. J., Ch. 544 
 
 17 Ch. D. 423; 44 L. T. 794; 29 
 W. E. 890 
 
 Coryton'a Law of Patents, 225 ; cited 
 4 App. C. 179 
 
 7Moo. P. C. C. 187 
 
 6W. E. 719 
 
 L. E., 7 Ch. 513 ; 41 L. J., Ch. 663 ; 
 27 L. T. Eep. 85 
 
 IJ. &H. 74 
 
 II L. T. Sep., N. S. 533 ; 11 Jur., 
 N. S. 9 ; 5 N. E. 165 ; 34 L. J., 
 
 Ch. 289 
 
 12 L. T. Eep., N. S. 51 ; 34 L. J., 
 Ch. 291 
 
 L. E., 3 Oh. 429 ; 37 L. J., Ch. 325 ; 
 18 L. T. Eep., N. S. 165 ; 16 W. E. 
 529 
 
 L. E., 6 H. L. 319 ; 21 "W. E. 705 .. 
 
 L. E., 10 Eq. 392 ; 18 W. E. 945 ; 22 
 L. T. Eep., N. S. 841 
 
 3 Jur., N. S. 357 
 
 27 L. J., Q. B. 154 
 
 I EU. & Ell. 990; 28 L. J., Q. B. 
 361 ; 5 Jur., N. S. 1164 
 
 30 L. J., Q. B. 81 ; 6 Jur., N. S. 1290 ; 
 3 L. T. Eep., N. S. 237; 1 Ell. & 
 Ell. 1020 
 
 10 H. L. Cas. 117 ; 31 L. J., Q. B. 
 233 ; 9 Jur., N. 8. 29 ; 11 W. E. 1 ; 
 7 L. T. Eep., N. S. 110 
 
 12 L. T. Eep., N. S. 489 ; 13 W. E. 
 804; 6N. E. 221 
 
 II Jur., N. S. 679 ; 34 L. J., Ch. 537 ; 
 13 W. E., 1028 ; 3 De G.. J. & S. 
 22 : 81 L. T. Eep., N. S. 719 
 
 h. E.,3 Ch. 429; 37 L. J., Ch. 321 ; 
 18 L. T. Eep., N. S. 159 ; 16 W. E. 
 
 524 
 
 128 (0 
 
 6 (/); 242 
 (d); 497 (m) 
 
 309 (i) 
 
 24(«)) 
 
 71 (x); 372 
 
 117 (m) 
 
 101 (I) 
 90 (0 
 387 (d) 
 
 384 (0 
 
 83 (m); 374 
 (ft): 386(a'.) 
 
 351 (e) 
 
 83 (m); 240 
 (s); 288 (k) 
 
 371 (k); 375 
 (o); 387(e) 
 
 375 (m) 
 247 (ij); 342 
 247 (w) 
 238 (q) 
 247 (w) 
 
 247 (w); 470 
 (o); 489 (w) 
 
 160 id) ; 288 
 
 160 (d) 
 
 240(8); 2.50 
 (c); 375(0; 
 430 (D) 
 
XVI 
 
 Table of Gases. 
 
 Name of Case. 
 
 Betts V. Neilson 
 
 (H. L.) 1871 
 
 ■ «. Walker.. 1850 
 
 • V. WiUmott . . . . 
 (V.-O.) 1870 
 
 (L. C.) 1871 
 Betts' Patent, In re . . 1862 
 
 Be-wley v. Hancock . . 1856 
 
 Bickford ». Skewes .. 
 
 (L. 0.) 1837 
 
 (V.-C.) 1838 
 
 (L. 0.) 1839 
 
 (Q. B.) 1841 
 
 Binney v. Feldtman . . 
 
 Birch «. Mather 
 
 Bircot's Case 
 
 Bischofs Patent 
 
 Blake's Patent, In re, 1873 
 
 Blakey v. Latham . . 
 
 Blamond's Patent, In re . . 
 1860 
 
 Blank v. Footman . . 
 
 Bloxam v. Elsee 
 
 (N. P.) 1825 
 
 Reference. 
 
 (K. B.) 1827 
 
 Bodmer'a Patent 
 
 1838—1840 
 
 , In re . . 
 
 1849 
 
 L. E., 5 H. L. 1; 40 L. J., Ch. 317 ; 
 19 W. E. 1121 
 
 14Q. B. 363 
 
 18W. E. 946 
 
 L. E., 6 Ch. 239 ; 19 W. E. 369 ; 25 
 L. T. Eep., N. S. 188 
 
 1 Moo. P. C. C, N. S. 49 ; 9 Jur., 
 N. S. 137 ; 11 W. E. 221 ; 7 L. T. 
 Eop., N. S. 577 ; 1 N. K. 187 
 
 6 De G., M. & G. 391 ; 2 Jur., N. S. 
 289 ; 4 W. E. 334 
 
 IWeb. P. C. 211 
 
 IWeb. P. C. 211 
 
 4 My. & Or. 498 ; 8 L. J., Ch. 188 
 
 1 Q. B. 938 ; 1 G. & D. 736 ; 6 Jur. 
 
 167 ; 10 L. J., Q. B. 302 ; 1 Web. 
 
 P. C. 214 
 Griff. 49 
 
 22 Ch. D. 629 ; 52 L. J., Ch. 292 ; 
 
 31 W. E. 362 
 3 Inst. 184 ; 1 Web. P. C. 31, n. . . 
 
 10. E. 162 
 
 L. E., 4 P. C. 535 ; 9 Moo. P. C. C, 
 
 N. S. 373 
 
 W. N. 1888, p. 126 ; 6 0. E. 29, 184 . . 
 3 L. T. Eep., N. S. 800 
 
 5 0. E. 661 
 
 1 C. & P. 558; Ey. & Moo. 187; 
 1 Carp. P. C. 434 
 
 6 B. & C. 169 ; 9 Dow. & Ey. 215 ; 1 
 Web. P. C. 132 (n.) ; 1 Carp. P. C. 
 440 
 
 1 Web. P. C. 740 ; 2 Moo. P. C. C. 
 
 471 
 6 Moo. P. C. 0.468 
 
 where cited. 
 
 160 ((i); 251 
 (e); 345(d); 
 363 (j) ; 366 
 (6);375(m); 
 472 (x) 
 
 302 (6) 
 
 164 (s) 
 
 155 (m1; 216 
 (i); 346(e); 
 360 (k) 
 
 106 (i); 114 
 
 (d); 123W); 
 
 131(21); 135 
 
 (m) 
 207 (i); 515 
 
 (h) 
 
 359 («) 
 
 337 (m) 
 
 387 (p) 
 
 426 <e); 441 
 («); 461 (o) 
 
 179(c); 506 
 
 (P) 
 312 (r) ; 322 
 
 0') 
 Cited518(!/); 
 
 519 (z) 
 
 127 (c) 
 133 
 
 893 (J); 510 
 W; 522 ij) 
 30(0 
 
 394 (ft) 
 
 72 (e); 273 
 (Z);407(m); 
 486 (fe); 580 
 
 67(!7);73(i); 
 286 (ft); 455 
 (s); 562 (s) 
 
 105 (e) 
 
 101 (fc); 136 
 (») 
 
Tahle of Cases. 
 
 XV 11 
 
 Name of Case. 
 
 Reference. 
 
 Fa^e in Digest 
 wliere citai. 
 
 Bodmer's Patent, In re . . 
 1853 
 
 Booth V. Kennard . . 1856 
 
 .1857 
 
 Boulton V. Bull . 
 
 (C. P.) 1795 
 
 (Ch.) 179 
 
 Bovill V. Cowan 
 Bovill V. Crate , 
 
 ..1865 
 ». Fiuoh.. ..1870 
 
 ■ V. Goodier 
 
 (M. E.) 1865 
 
 (M. E.) 1866 
 
 (M. E.) 1867 
 -17. Hadley ..1864 
 
 - ij. Hitchcock ..1868 
 
 - 1). Key worth ..1857 
 
 ■ V. Moore i 
 
 (L. C.) 1815 
 
 (N. P.) 1816 
 
 (0. P.) 1816 
 -». Pimm .. ..1856 
 
 -C.Smith.. ..1866 
 
 BovJU'a Patent, In re 1863 
 
 8 Moo. P. C. C. 282 ; 6 M. D. 114 
 
 1 H. & N. 527; 26 L. J., Bxch. 23; 
 3 Jur., N. S. 21 ; 28 L. T. Eep. 
 160 ; 5 "W. E. 85 
 
 2 H. & N. 84 ; 26 L. J., Exch. 305 ; 
 6 W. E. 607 ; 29 L. T. Eep. 163 
 
 2 H. Bl. 463 ; Dav. P. C. 162 ; 1 
 Carp. P. 0. 117 
 
 3 Ves. 140 
 
 2 Griff. 45 
 
 L. E., 1 Eq. 388 ; 2 Griff, 46 . . . . 
 
 L. E., 5 C. P. 523; 39 L. J., C. P. 
 277; 18 W. E. 1071; 23 L. T. 
 Eep., N. S. 151 
 
 L. E., 1 Eq. 35 ; 35 Beav. 264 ; 35 
 L. J., Gh. 174; 13 L. T. Eep., 
 N. S. 489 ; 14 W. E. 91 ; 2 Griff. 
 
 47 
 
 35 Beav. 427 ; L. E., 2 Bq. 195 ; 35 
 L. J., Ch. 432 
 
 36 L. J., Ch. 360 
 
 17 C. B., N. S. 435 ; 10 L. T. Eep., 
 
 N. S. 650 ; 4 N. E. 464 
 
 16 W. E. 321 ; L. E., 3 Ch. 417 ; 
 37 L. J., Ch. 223 
 
 7 Ell. & Bl. 725; 3 Jur., N. S. 817; 
 5 W. E. 686 ; 29 L. T. Eep. 194 
 
 2 Coop. 56 Xn.) 
 
 Dav. P. 0. 361 
 
 2 Marsh. 211 
 
 11 Exch. 718 
 
 L. E.,2Bq. 459; 2 Griff. 49 
 1 Moo. P. O. C, N. S. 348 
 
 133;1340"); 
 137 (2/) 
 
 515 0') 
 
 457(6); 488 
 (0 
 
 85 (a); 286 
 «:421(»); 
 486(d); 492 
 (6);500(a;); 
 518 (2/); 540 
 (y): 571 («) 
 
 334 (6) 
 
 251 (d) 
 
 177 (y); 294 
 (.v); 348(0) 
 
 135 (o) 
 
 264(4); 303 
 (h) 
 
 343(0); 355 
 («,) 
 
 304 (m) 
 
 385 (») 
 
 357 (/) 
 
 174(/); 503 
 (sr);515(m) 
 
 324 (r) 
 
 183 (m); 438 
 (0;447(p); 
 455(g); 486 
 (/); 572(2,) 
 
 447 (p) 
 
 191 (K) ; 468 
 (i); 515 (Z) 
 
 177 (m) ; 304 
 (It); 320(e) 
 
 102 (0 ; 111 
 (p); 135 (n) 
 6 
 
XVlll 
 
 Table of Cases. 
 
 Name of Case. 
 
 Reference. 
 
 13 C. B. im ; 22 L. J., C. P. 194 ; 17 
 Jur. 1057 ; 1 C. L. Eep. 807 
 
 2 A. &E. 278; 4N. &M. 264. .. 
 6 0. E. 9 
 
 5 0. E. 510 
 
 57 L. T. 866 ; W. N. 1887, p." 157 ; 
 5 O. E. 33 
 
 3 0. E. 285 ; 5 O. E. 557 ; 6 0. E. 528 
 
 6 0. E. 152 
 
 Holroyd, 81 ; 1 Carp. P. C. 168 ; 1 
 ■ Web. P, C. 44.(n.) 
 
 9 App. C. 589 ; 53 L. J., P. C. 84 ; 1 
 .. O..K. 154; Griif. 255 .. .. 
 
 3 0. E. 193; Griff. 205 
 
 34 Ch. D. 668; 4 O. E. 40; 56 
 L. J., Ch. 497; 56 L. T. 292; 35 
 W. E. 341 
 
 4 0. E. 400 ; 5 O. E. 151 ; 3 T. L. E. 
 
 352 
 
 7 Jur., N. S. 690; 4 L. T. Eep., 
 N. S. 456 ; 3 De G., F. & J. 695 
 
 1 O. R. 165; Griff. 54 
 
 12 Beav. 1 ; 34 Loud. Jour. 295 .. 
 
 SBeay. 229 V. .. 
 
 7 Moo. P. C. C. 493 .. .. ;.' .. 
 
 1 O.E. 126,192; Griff. 55 .'. .. 
 
 2 O. E. 13 
 
 5 0. E. 74, 226 ,. 
 
 1 Good. P. C. 88 
 
 7 0. E. 1 
 
 8 "El. & B. 478; 4 Jur., N. S. 279; 
 
 27 L. J., Q. B. 145; 6 W. E. 42 
 
 5Jur., N. S. 1025; 28 L. J.,.Q. B. 
 175 
 
 2 Lond. Jour., C. S. 35; Web. P. L. 
 
 102 
 
 See In re Mitchell's Patent . . 
 
 Page in Digest 
 where cited. 
 
 Bower v. Hodges . . 1853 
 
 Bowman v. Taylor . . 1834 
 Bown V. Humber & Co. . . 
 
 V. Sansom (C. A.) 
 
 Boyd V. Farrar 
 
 - V. Horrocks 
 
 (C.A.) 
 
 Bramah v. Hardcastle 
 
 (¥■. P.) 1789 
 
 Brandon's Patent 
 
 Brauer v. Sharp - :. 
 Bray v. Gardner (C. A.) 
 
 Brennand's Patent, In re 
 1861 
 
 Brereton v. Eicliardson .. 
 
 Bridson v. Beneclse . . 1849 
 
 V. M' Alpine 1845 
 
 Bridson's Patent, In re . . 
 1852 
 
 Briggs V. Lardeur . . 
 
 (G. A.) 1884 
 
 Britain v. Hirsuh (C. A-) 
 
 British Dynamite Co. v. 
 Krebs 
 
 British Tanning Co. v. 
 
 Groth 
 Brook u. Aston .. ..1857 
 
 (Ex. Ch.) 1859 
 Brooks «. Eipley ..1831 
 
 Brotheiton's Patent, In re 
 1867 
 
 213 (z) 
 
 87(6) 
 217 (o) 
 323 (o) 
 313 (w) 
 
 312(0; 318 
 (r); 363 0') 
 
 361 (6) ; 454 
 («);510(y) 
 
 261 (d) 
 104 (a;) 
 648 (o) 
 
 21(6) 
 
 435 (c) 
 
 41(0) 
 
 240 (tt) 
 
 340 (a) ; 847 
 
 0') 
 338(«); 350 
 
 (a) 
 
 122 (fc); 139 
 
 (0: lilW 
 
 344 (d) 
 
 289 (6) 
 306(«); 381 
 (/) 
 432 (6) 
 
 344 (a;) 
 
 527 (y) 
 527 (j,) 
 364 (p) 
 41(5) 
 
Table of Cases. 
 
 XIX 
 
 Kame of Case. 
 
 (Brough's Patent, In re .. 
 ■ 1844 
 
 Brown V. Annandale- 
 
 V. Kidstone . . 
 
 (Ort. Sess.) 1852 
 
 V. Moore . . 1816 
 
 Brown's Patent 
 
 BrownMU's Application .. 
 
 Brunton v. Hawkes . . 
 
 (N. P.) 1820 
 
 V. ..1821 
 
 - V. White 
 
 .1825 
 
 Bull V. Petman 
 
 Bulnoia v. Mackenzie 1837 
 
 Burnett V. Tak 
 
 Burrough's Patent, In re . . 
 Burt V. Morgan & Co. 
 
 Bosh V. Pox (N. P.) 1852 
 
 V. (Ex. Ch.) 1854 
 
 . . V. (H. L.) 1856 
 
 C.'s Application . . 1890 
 
 Caldwell v. Vanvlissengen 
 1851 
 
 Calvert v. Ashburn 
 Cameron v. Uray 
 
 .1795 
 
 Campbell's Patent, In re . . 
 1853 
 
 Campion v. Benyon . . 1821 
 
 Oannington v. Nuttall . . 
 (H. L.) 1871 
 
 Card's Patent, In re 1848 
 
 Reference. 
 
 7Beav. 104 
 
 1 Web. P. C. 433 ; 8 CI. & F. 437 
 
 1 S., M. & P., 769 ; M. Dig. 344 
 
 Cit. 3 Swan. 264 
 
 2 Griff. 1 
 
 3 0. E. 212 
 
 6 0. E. 135 
 
 1 Carp. P. C. 405 
 
 4 B. & Aid. 541 ; 1 Carp. P. C. 405 
 
 7 D. & E. 103 
 3 0. E. 390.. 
 
 4 Bing. N. C. 127 ; 6 Dowl. 215 ; 1 
 Web. P. C. 260 ; 5 Scott, 419 
 
 45L. T. 743 
 
 See Manceaux'a Patent, In re . . 
 
 3 T. L. Eep. 666 ; 4 O. E. 278 ; 
 
 W. N. 1887, p. 123 
 Macrory's P. C. 152 ; 23 L. J., Exch. 
 
 257 
 
 Macrory's P. C. 166 ; 23 L. J., Exch. 
 257 
 
 5 H. L. Cas. 707 : 2 Jnr., N. S. 1029 ; 
 25 L. J., Exch. 251; Macrory's 
 P. C. 178 
 
 7 0. E. 250 
 
 9 Hare, 415 ; 16 Jur. 115 ; 21 L. J., 
 
 Ch. 97 
 
 John, 34 
 
 6 T. K. 363 ; Dav. P. C. 220 .. .. 
 22L. T. Eep. 93 
 
 3B. &B. 5; 6B. Mo. 71 
 
 L. E., 5 H. L. 205 ; 40 L. J., Ch. 739 
 
 6 Moo. P. C. C. 207; 12 Jur. 507 : 
 M. Dig. 75 ; 2 Web. P. C. 161 
 
 Page in Digest 
 where cited. 
 
 60(2) 
 
 225(g) 
 341 (d) 
 
 325 (s) 
 37(0) 
 142 
 51(0 
 486 (g) 
 
 149 (jc); 424 
 («) ; 501 (a) 
 522 (n); 562 
 
 353 (/) 
 298 (m) 
 307 (o) 
 
 547 (0 
 57 (y) 
 553 (z) 
 
 525 (o) 
 
 498 (p) 
 
 488 (s); 525 
 
 38(/) 
 
 79 (»); 145 
 (m); 154 
 (i):157(»); 
 287 (j); 340 
 (6) 
 
 533 (i) 
 
 353 (i) 
 
 40 (i); 59 (ft) 
 
 8 (o); 562 (9) 
 24 (r); 179 
 
 (a); 226(0: 
 
 499 (») 
 
 1 (d) ; 78 
 6 2 
 
XX 
 
 Table of Cases. 
 
 Name of Case. 
 
 Reference, 
 
 Page in Digest 
 wtiere cited. 
 
 Cardwell's Patent, In re.. 
 1856 
 
 Carez's Application . . 
 
 Carpenter «. Smith . . 
 
 (N. P.) 1841 
 ■• ii. -— .-.1842 
 
 V. Wrfkei; 
 
 Carpenter's Patent, In re 
 1854 
 
 Carr's Patent, lii re ..1873 
 
 Cartsbum Compy. v. Sharp 
 1884 
 
 Gartwright v. Amatt . . 1799 
 
 Cartwright v. Earner 1800 
 
 Challenderu.Eoyle (C. A.) 
 
 Chambers v. Crichley 1864 
 Chandler's Patent , . 
 Chanter v. Dewhurst 1844 
 
 ■ V. Johnson ,.1845 
 ■». Leese ..1838 
 
 ■ V. ■ 
 
 (Ex. Ch.) 1839 
 
 Chatwood's Patent . . 
 
 Cheavin v. Walker . . 
 
 (V.-C. B.) 1876 
 
 (C. A.) 1877 
 
 Cheeseborough's Patent . . 
 1884 
 
 Cbeetham v. Oldham 
 
 Chevasse v. Stevens . . 
 Child's Patent .. .'.1883 
 Chollet V. Hoffm&n .,1857 
 
 Cluirch's Patent 
 
 CUiurch Engineering Com- 
 pany V. Wilson 1886 
 
 ■lOMoo. P. C. C. 488 
 
 6 0. B. 552 ■. 
 
 IWeb. P. C. 530 
 
 9 M. & W. 800 ; 1 Web. P. C. 540 ; 
 11 L. J., Exoh. 213 
 
 1 Web. P. C. 268 (n.) .. 
 
 .2 Moo. P. 0. C, N. S. 191 (n.) 
 
 L. R., 4 P. C. 539; 9 Moo. P. C. C, 
 N. S. 379 
 
 10. R. 181 
 
 2B. &P. 43; Dav. P. C. 240.. .. 
 
 Cited 14 Vesey, 131, 136 
 
 36 Ch. D. 425 ; 4 O. E. 363 ; 3 
 T. L. Rep. 790 ; 56 L. J., Ch. 995 ; 
 57 L. T. 734 ; 36 W. E. 857 
 
 38Beav. 374 .. 
 
 Griff. 270 
 
 12 M. & W. 823; 13 L. J., Exoh. 
 198 
 
 14 L. J., Exch. 289 ; 14 M. & W. 
 
 408 
 
 4 M. & W, 295 ; 1 H. & H. 224 ,, 
 
 5 M. & W. 698 ; 9 L. J., Exch. 327 
 
 L. R. 5 P. C. 88 (n.) 
 
 L. E., 5 Ch. D. 850 ; 46 L. J., Ch. 
 
 265; 35 L. T. Eep., N. S. 757 
 L. E.', 5Ch. D. 861 ., ,, ',, ,. 
 
 Griff. 303 
 
 5 0. R. 617, 624 ; 7 0. E. 116.. ,. 
 
 W.N. 1874, 193 
 
 John, 214 
 
 7 Ell. & Bl, 686 ; 26 L. J., Q. B. 
 249; 3 Jnr., N. S. 935; 5 W. E. 
 573 ; 29 L. T. Eep. 158 
 
 3 0. E. 95; Griff. 256 
 
 3 0. E. 123; Griff. 236 
 
 Ill (m) 
 
 129 
 
 <J>) 
 
 
 64 (2); 76(0 
 
 266 («) ; 
 
 447 
 
 (r); 501 (d) 
 
 235 (/) 
 
 
 308 (d) 
 
 
 137 (a) 
 
 
 126(1,) 
 
 171 (a) ; 367 
 (d) 
 
 66(d) 
 
 422 (p) 
 
 551 (») 
 
 91(2) 
 53(a) 
 212 (w) 
 
 212 (w) 
 
 211 (u) ; 287 
 
 («) 
 211 (m); 287 
 
 (») 
 126 (z) 
 277 (a) 
 
 277 (a) 
 
 26 (6) 
 
 242 (6); 261 
 (cO ; 299 
 (g); 380 (m) 
 
 70 (w) 
 
 126 (a*) 
 
 302 id); 399 
 (w) 
 
 104(2,) 
 
 299 (p); 550 
 
Table of Oases. 
 
 XXI 
 
 Kame of Case. 
 
 Reference. 
 
 Page in Digpst 
 where cited. 
 
 Claridge'a Patent ..1851 
 Clark V. Adie (V.-C.) 1873 
 
 V. (First appeal) 
 
 (L. JJ.) 1875 
 
 ' V. (H. L.) 1877 
 
 V. . . (Second 
 
 appeal) (V.-C. B.) 1876 
 V. (0. A.) 1876 
 
 - V. (H. L.) 1877 
 
 ■ V. Pergnsson 1859 
 •«. Kenrick .. 1843 
 
 Clark's Patent, In re 1870 
 
 Clayton v. Percy 
 Clifford's Patent. 
 
 .1854 
 
 Clippens Oil Company ■». 
 
 Henderson (H. Ij.) 
 
 Clothworkers of Ipswich 
 
 Case ■ ■ ■ ■ 1615 
 
 Cobley's Patent 
 Cochrane v. Braithwaite . . 
 (N. P.) 1830 
 
 V. Smethurst . . 
 
 1816 
 Cochrane's Patent . . 1885 
 Cooking's Patent 
 Codd». Bratby .. ..1884 
 Codd's Patent .. ..1884 
 Coles V. Bay lis, Lewis & Co. 
 V. Saqui and Law- 
 
 (G. A.) 
 CoUard «. Allison ..1839 
 CoUey 1). Hart 
 
 Combined Weighing and 
 Advertising Machine 
 Company v. Automatic 
 Weighing Company 
 
 7Moore,.P.C. 0.394 
 
 21W. E. 456 
 
 L. E., 10 Ch. App. 667; 21 W. E. 
 
 764; 45 L. J., Oh. 228.; 33 
 
 L. T. Eep., N. S. 295 
 
 L. E., 2 App. Oas. 315 ; 46 L. J., Ch. 
 
 585; 36 L. T. Eep., N. S. 923; 26 
 
 W. E. 45 
 
 L. E., 3 Ch. D. 134; 24 W. E. 1007 
 
 L. E., 3 Ch. D. 141 ; 35 L. T.Eep., 
 
 N. S. 349. 
 L. E., 2 App. Oas. 423; 46 L. J., 
 
 Ch. 598 ; 37 L. T. Eep., N. S. 1 ; 
 
 26 W. R. 47 
 IGif. 184 
 
 1 Dow. & Low. 392 ; 13 L. J., Bxch. 
 
 6; 12M. & W. 219 
 L. E., 3 P. C. 421 ; 7 Moo. P. 0. C, 
 
 N. S. 255. 
 
 48Leg. 0. 150 
 
 Cited L. E., 1 P. C. 402 ; Good. P. 0. 
 
 560 
 8 App. 0. 873 ; 20 Scot. L. E. 423 . . 
 
 Godbolt, 252 ; 1 Eoll. E. 4 .. .. 
 
 See Copley's Patent 
 
 3 Lohd. Jour., 0. S. 42 ; 1 Carp. P. C. 
 493. 
 
 1 Stark. 205 ; Dav. P. 0. 354 . . . . 
 
 Griff. 304 
 
 2 0. E. 151; Griff. 258 .. .. ;. 
 1 O. E. 209; Griff. 56 .. .. :: 
 Griff. 305 .. 
 
 3 0. E. 178; Griff. 58 .. ..^ .. 
 
 5 0. E. 489 .' .. 
 
 40 Ch. D. 132 ; 58 L. J., Ch. 237 ; 59 
 
 L. T. 877 ; 37 W. E. 109 ; 6 O. E. 41 
 
 4My. &Cr. 487 
 
 6 0. E. 17 ; 7 O. E 101 ; 42 L. T. 
 424 ; 44 Ch. D. 179 ; 59 L. J., Ch. 
 308 ; 38 W. E. 501 
 
 See Automatic Weighing Machine 
 Company v. Combined Company. 
 
 102 (p) 
 216 (7c) 
 181 (e) 
 
 155(2?); 181 
 (e); i93(r); 
 451 (A); 487 
 (o); 507 (r) 
 
 474 (c) 
 
 474 (o) 
 
 216 (Ic) ; 474 
 («) 
 
 342 (^■); 384 
 (»-) 
 23 (m) 
 
 125 («) 
 
 331 (p) 
 119 (w) 
 
 182 (e) 
 
 492 (2) 
 
 57(«)) 
 184 (r) 
 
 562 (p) 
 
 14(c) 
 135 (g) 
 20(a) 
 12 (w) 
 444 (ft) 
 460 (3) 
 
 317 (m) ; 393 
 (0; 521 (A) 
 
 337 (m) 
 
 553(5); 555 
 (?) 
 
 554 (e) 
 
XXll 
 
 Table of Cases: 
 
 Kame of Case. 
 
 Page in Digest 
 'where cited. 
 
 Conniffs Application . 1872 
 
 Cook and Wheatatone's 
 Patent, In re 1851 
 
 ». Pearoe .. ..1843 
 
 (Ex. Ch.) 1844 
 Cooper and Ford's Patent 
 Copeland v. Webb ..1862 
 Copley's Patent 
 
 Comish I). Keene 
 
 (N. P.) 1835 
 
 (C. P.) 1837 
 
 Couohman v. Greener 
 
 Craig and Macfarlane's Ap- 
 plications 
 
 Crampton v. The Patents 
 Investment Company 
 
 (0. A.) 
 
 V. Swete . . 
 
 Crane «. Price .. ..1842 
 
 Crofts ». Peach .. ..1836 
 CroUi). Edge .. ..1850 
 
 Crompton v. Ibbotson 1828 
 
 V. Anglo-Ameri- 
 can Brush Electric Light 
 Company (C. A.) 
 
 Cropper v. Smith (1) 
 
 (C.A.) 
 (H. L.) 
 
 (2) .. 
 
 John, 165 .. .. 
 38 Lond. Jour. 223 
 
 12 L. J., Q. B. 187; 8 Q. B. 1044; 7 
 Jur. 764 
 
 8 Q. B. 1054; 8 Jur. 499; 13 L. J., 
 Q. B. 189 
 
 Griff. 275 
 
 11 W. E. 134; 1 N. E. 119 .. .. 
 
 31 L. J. Ch. 333 ; 8 Jur. N. S. 106 ; 
 5 L. T., N. S; 387 
 
 1 "Web. P. C. 501 ; 2 Carp. P. C. 314 
 
 3 Bing. N. C. 570; 4 Scott, 837; 2 
 Hodges, 281; 6 L. J., C. P. 225; 
 1 Web. P. C. 513; 2 Carp. P. C. 
 371 ; 6 Eep. Arts, 4th Series, 102 
 
 10. E. 197; Griff. 58 
 
 John, 165 
 
 5 0. E. 382 
 
 6 0. E. 287 
 
 58L. T. 516 .. .. .; .; .. 
 
 4 M. & G. 580; 1 Web. P. C. 393; 5 
 Scott, N. E. 338 ; 12 L. J., C. P. 
 81; 2 Carp. P. 0. 669; 18 Eep. 
 Arts, 4th Series, 102 
 
 2 Hodg. 110 ; 1 Web. P. 0. 268 .. 
 
 9 C. B. 479; 14 Jur. 553; 19 L. J., 
 C. P. 261 
 
 Dan. & Lloyd, 33; 1 Web. P. C. 83; 
 1 Carp. P. C. 460 
 
 35 Ch. D. 283; 4 O. E. 197; 35 
 W. K. 789; 56 L. J., Ch. 802 
 
 24 Ch. D. 305; 33 W. E. 60, 753; 
 W. N. 1885, p. Ill 
 
 ^26 Ch. D. 700 ; 1 O. E. 81 ; 2 O. E. 
 61 ; 53 L. J., Ch. 891 ; 51 L. T. 729 
 
 10 App. Cas. 249 ; 2 O. E. 17 ; 55 
 L. J., Ch. 12 
 
 28 Ch. D. 148 ; 33 W. E. 338 ; .H L. J., 
 Ch. 287 ; 52 L. T. 94 ; I 0. E. 254 
 
 43(d) 
 102 (o) 
 
 564 (w) 
 
 564 (so); cited 
 412 (r) 
 
 50 (i) 
 
 331 (r) 
 
 57 (w) 
 
 54 (g); 233 
 (ft); 274 (p); 
 364 (r); 425 
 (a); 576(g); 
 580 (/) 
 
 244 (y); 267 
 (a;);.494(/) 
 
 196 (w) ; 217 
 (m); 477(3) 
 
 55 ( j») 
 
 393 (/) ; 553 
 
 (2*) 
 
 420 (i') 
 
 210 (r) 
 
 31 (k); 447 
 
 (0;496 0-) 
 
 502(e); 573 
 
 (?) 
 325 (v) 
 568 (0 
 
 439 (o) 
 
 315 ((?) 
 
 316 (ft) ; 
 
 (0) 
 
 477(/*); 
 
 («) 
 92 (d); 
 
 (r) 
 
 13(6) 
 
 390 
 
 538 
 
 305 
 
Table of Gases. 
 
 XXlll 
 
 Name of Case. 
 
 Reference, 
 
 Page in Digest 
 where cited. 
 
 CrossMll V. Evory „.1848 
 
 Orossley v. Beverley . . 
 
 (N. P.) 1829 
 
 (K. B.) 1829 
 
 (.Ch.),1829 
 
 V. Derby Gas Com- 
 pany (U C.)1834 
 
 (L. C.) 1838 
 
 ■ V. Dixon • . . 
 
 (H. L.) 1863 
 
 - V. Potter 
 
 (N. P.) 1853 
 
 1: Stewart .'.1863 
 
 V. Tomey . . 
 
 (V.-C. M.) 1876 
 
 Crosstliwaite v. Steel 
 
 (Ch. D.) 
 
 (Q. B. D.) 
 Growl i>. Edge .. ..1850 
 Groysdale v. Fisher .. 
 
 Qummings' Patent . . 
 Curtis 17. Cutts .. ..1839 
 V. Piatt (V.-C.) 1863 
 
 , B. (0. P.) 1864: 
 
 B. _. (L. c;) 1864 
 
 V, (H. L.) 1866 
 
 Cutler®. Bower.. ;.1848 
 Cutler's Patent, In re 1839 
 
 Daine's Patent, In re 1856 
 
 Dalziel v. Railway Carriage 
 and Steamboat Company^ 
 
 lOL. T. Rep. 459 
 
 3 C. & P. 513; Mo. & Mai. 283; 1 
 ..Wqlj. P, C. 106 
 
 9 B. & C. 68 ; 1 "Web. P. C. 112 . . 
 1 Web. P. 0. 119 ; 1 Kubs. & My. 166 
 
 4 L, J., Ch. 25; 1 Web. P. C. 119 .. 
 3-My. &Cr. 428 .. .. 
 
 10 Hi L. Cas. 293; 9 Jur., N. S. 
 607 ; 32 L. .7., Ch. 617 ; 11 W. E. 
 716; 8 L. T. Eep., N. S. 260; 1 
 N. E. 540 
 
 Macr.P. C. 240 
 
 IN. E. 426 
 
 L. E., 2 Ch. D. 533 ; 34 L.. T. Eep., 
 
 N. S. 476 
 
 5 0. R. 220 
 
 6 0. R. 190 
 
 39L. 0.443; M. Dig. 194 .. .. 
 
 I 0. B. 17 ; Griff. 73 
 
 Grjff. 277 
 
 8 L. J., Ch. 184 ; 2 Coop. C. C. 60 (n.) 
 
 19 Newt. Lond. Jour., N. S. 44 ; ■ 8 
 L. T. Eep., N. S. 657 ; 3 Ch. D. 
 136 (n.) ; 2 Griff. 53 . . . , 
 
 33 L. J., C. P. 255 ; 10 Jur., N. S. 
 i.23; 10 L. T. Eep., N. S. 383; 
 4 N. R. 152 
 
 11 L.T. Rep., N. S. 245 ". 
 
 35 L. J., Ch. 852 ; L. E., 1 H. L. 337 
 
 II Q. B. 973 ; 12 Jur. 721 ; 17 L. J., 
 Q. B. 217 
 
 4 My. & Cr. 510 ; 1 Web. P. C. 418 
 
 26 L. J., Ch. 298 ; 4 W. E. 455 
 Cited L. E. 13 Bq. 358 .. .. 
 
 340 (z) 
 
 83 (w); 424 
 (x) ; 480 (9) 
 
 440 (3) ; 566 
 
 349 («) 
 
 349 («) 
 
 367 (/) 
 
 91 (o); 214 
 (c) 
 
 429(3); *57 
 (a); 542(c); 
 565 (a); 574 
 U) 
 
 320 («) 
 
 322 (70 
 
 218 (i,) 
 
 218 (p) 
 
 154 (j) 
 240(»); 531 
 (/) 
 52(1)) 
 
 290 (i); 337 
 
 (0) 
 
 302 (e) 
 385 (m) 
 
 203 (ic); 354 
 (0; 516(3) 
 
 192(»); 204 
 (/);296((Z) 
 
 88(e) 
 
 40 (7i); 57 
 (t); 362(e); 
 573 (/) 
 
 149 (3) 
 546 (i) 
 
XXIT 
 
 Table of Cases, 
 
 Name of Case. 
 
 Reference. 
 
 13 L. T. Eep., N. S. 142 
 
 5 0. E. 413 
 
 Noy. E. 173; 1 Web. P. 0. 1; 11 
 Co. Eep. 84 
 
 6 0. E. 365 
 
 Griff. 307 
 
 IN. E. 173, 307 
 
 5N. E. 484; 2Hein. &M. 282 ... 
 
 3 L. T. Eep., N. S. 503 
 
 L. E. 1 Eq. 302 ; 35 L. J., Cb. 204; 
 
 14 L. T. Eep., N. S. 53 ; 14 W. E. 
 243 ; 12 Jur., N. S. 71 
 
 2 Griff. 26 
 
 1 O.E. 13, 193; Griff. 75 .. .. 
 
 L. E., 1 Eq. 38 ; 13 L. T. Eep., N. S. 
 399 ; 14 W. E. 48 
 
 t. K., 3 Eq. 500 (n.); 14 W. E. 126; 
 13 L. T. Eep., N. S. 399 
 
 2H. &M. 725 
 
 L. E., 3 Eq. 496 ; 36 L. J., Ch. 482 ; 
 
 15 L. T. Eep., N. S. 559 
 
 43 Oh. D. 485; 38 W. E. 362; 7 
 O. B. 54 
 
 3T. L. E. 349; 4 0. E. 119 .. .. 
 
 7 B. & B. 738 ; 3 Jur., N. S. 841 ; 5 
 W. E. 704; 29L. T. Eep. 194 
 
 3K. &J. 388 
 
 38 Lond. Jour. 224 
 
 13Ch. D. 393 
 
 1 Mo. & Bob. 457 ; 1 Web. P. C. 154 
 
 5 Tyr. 393 ; 2 Cr., M. & E. 476 ; 1 
 Web. P. 0. 158 ; 1 Gale, 109 
 
 ICarp. P. 0.698 
 
 Puge ia Digest 
 ^^ here cited. 
 
 Dangeifield v. Jones 1865 
 
 Daniel's Application ' .. 
 Daroyc. Allin .. ..1602 
 
 Darrah v. Purser 
 Dart's Patent . . 
 Davenport v. Jepson . . 1862 
 
 V. Goldberg and 
 
 Philips 1865 
 
 V. Eicbajds 
 
 1860 
 
 V. Eylands 1865 
 
 David and Woodley's Ap- 
 plication 
 
 Davis V. Feldtman (0. A.) 
 Daw «. Ely .. (V.-C.) 1865 
 
 V. .. (V.-O.) 1865 
 
 V. .. (V.-O.) 1865 
 
 V. .. (V.-O.) 1867 
 
 Day i». Foster .. ..1890 
 
 Deacon's Patent 
 
 De la Eue v. Dickinson . . 
 1857 
 
 (V.-O.) 1857 
 
 Denley v. Blore 
 
 (N. P.) 1851 
 
 Dering's Patent 
 
 (L. C.) 1880 
 
 Derosne v. Fairie 
 
 (N. P.) 1835 
 
 (Exch.) 1835 
 
 Derosne's Patent, lu re . . 
 1835 
 
 91 (r); 449 
 (e); 504(0, 
 
 42 (y) 
 
 144(/); 222 
 (a); 492(1,); 
 571(2) 
 
 306 (ic) 
 
 13(2) 
 
 342 (J); 354 
 (2) 
 
 343 (m); 357 
 id) 
 
 288(«); 345 
 (c); 366 (z) 
 
 374 (j) ; 386 
 
 46(A) 
 
 182(3); 257 
 (0 
 303 (g) 
 
 449(d); 487 
 (m) 
 
 303 (i); 320 
 
 (b) 
 70 («) : 226 
 
 (i);350(a;); 
 
 379 (2,) 
 
 555 (/) 
 
 127 (ff) 
 
 174 (m); 204 
 (d) 
 
 319 (v) 
 
 287 (r) 
 
 56 (p) 
 
 286 (0 
 
 219 (0; 424 
 (z) ; 440 (s) ; 
 461 (0 
 
 15 (i) 
 
Table of Oases: 
 
 Xxv 
 
 Name of Case. 
 
 Derosne's Patent, .In re . . 
 1844 
 
 Deutsche Nahmasohinen 
 Fabrik v. Pfaff 
 
 (G. A.) 1890 
 
 De Vitre i). Betts .. .. 
 
 Bietz's Patent 
 
 Dillyi). Doig .. ..1794 
 Dircks v. Mellor ..1845 
 
 Dismore's Patent, In re . . 
 
 1853 
 
 Dixon V. The London Small 
 
 Arms Company (Limited) 
 
 (Q. B. D.) 1875 
 
 V. ■ : — ^. 
 
 (0. A.) 1876 
 
 (H. L.) 1876 
 
 Dohbsu Penn .. ..1849 
 DoUond's Patent ..1758 
 
 Dowllng«. Billington 1890 
 
 Downea ■». Falcon Engine 
 
 and Car Works 
 Downton's Patent . . 1839 
 
 Drake v. Muntz's Metal 
 . Company 1886 
 
 Driffield Linseed Cake 
 Company v.\ .Waterloo 
 Mills Cake Company 
 
 Drummond's Patent .. 
 Dudgeon v. Thomson 1874 
 
 17. Thomson and 
 
 Donaldson (H. L.) 1877 
 
 Duncan and Wilson's Pa- 
 tent 
 
 Dundon's Application 
 
 Dunnicliff v. Mallett 1859 
 
 Duvergier v. Fellows 1828 
 
 Keference. 
 
 4 Moo. P. C. C. 416; 2 Weh. P. C. 1 
 7 O. E. 16, 251 
 
 See Betts «. De Vitre 
 
 6 O.K. 297 
 
 2Ves. Jun. 486 
 
 26 Lond. Jour. 268 
 
 18Beav. 538 
 
 L. E., 10 Q. B. 130; 44 L. J., Q. B. 
 63 ; 31 L. T. Eep., N. S. 830 
 
 L. E., 1 Q. B. D. 384 ; 46 L. J., Q. B, 
 
 617; 35 L. T. Eep., N. S. 138; 24 
 
 W. E. 766 
 
 L. E., 1 App. Cas. 632 ; 46 L. J., Q. B. 
 
 617; 35 L. T. Eep.,N. S. 559; 25 
 
 W. E. 142 
 
 3Exch.427 
 
 Cit. 2 H. Bl. 469, 470, 487 ; Dav. P. C. 
 170, 171, 172, 199 ; 1 Web. P. 0. 
 43 ; 1 Carp. P. 0. 28 
 
 7 0. E. 191 
 
 2 0. E. 197 ; 3 0. E. 70 ; Griff. 77 
 IWeb. P. 0.565 
 
 3 0. E. 43; Griff. 78 
 
 31 Ch. D. 638 ; 55 L. J., Ch. 391 ; 
 54 L. T. 210 ; 2 T. L. E. 314 ; 34. 
 W. E. 360 ; Griff. 80 ; 3 0. E. 46' 
 
 43 Ch. D. 80; 59 L. J., Ch. 102; 
 W. N. 1889, 195 ; 6 0. E. 576 
 
 22 W. E. 464 ; 30 L. T. Eep.,. N. S. 
 
 244 
 L. E., 3 App. Cas. 34 
 
 1 T. L. E. 59 ; 1 0. E. 257 ; Griff. 
 
 258 
 Griff. 278 
 
 7 C. B., N. S. 209; 1 L. T. E., N. S. 
 514 ; 6 Jur., N. S. 252 ; 29 L. J., 
 C. P. 70 ; 8 W. E. 260 
 
 5 Bing. 248 ; 2 M. & P. 384 .. .. 
 
 Page in Digest 
 where cited. 
 
 106 (m); 110 
 (/);113(s); 
 121 (/) 
 
 261 (c); 575 
 (o); 318(8') 
 
 371 (a) ; 375 
 (0); 387(e) 
 47(0) 
 293 (0 
 338 («) 
 30 (r) 
 
 169 («) 
 
 169 (d) 
 
 80 (o); 149 
 (0; 169 (d> 
 
 246 (s) 
 272 (70 
 
 163 (j'); 228 
 (ti);532(i') 
 
 182 (h) 
 
 100(/); 109 
 (a); 117(0 
 120 (6) 
 
 329 (0 
 
 550 (0 
 
 404 (7c) 
 343 (r) 
 
 25 (x); 195 
 (0; 473(a) 
 
 127 (d) 
 
 45 (3); 48 (a;) 
 69 (p); 287 
 (0 
 
 67 (70 
 
XXTl . 
 
 Tahle of Gases. 
 
 Name of Case. 
 
 Duvergier v. Fellows 
 
 (Ex. Ch.) 1830 
 
 (H-. L.)1832 
 Dyer, Ex parte .. ..1S12 
 
 Eades v. Starbuck Wagon 
 Company 
 
 Eadie's Patent .. 
 
 Easterbrook v. Great West- 
 ern Railway Company 
 
 Edge's Patent 
 
 Edgeberry ». Stevens 1691 
 
 Edison Electric Light Com- 
 pany V. Shippey 
 
 Edison and Swan Electric 
 Light Company v. Hol- 
 land 
 
 (1) 
 
 (C. A.) 
 
 - V. Woodhouse 
 
 (C. A,) 
 (2) 
 
 (0. A.) 
 
 Edison Telephone Com- 
 pany V. Indiarubber Co. 
 
 Edmund's Patent 
 
 Edwards v. Normandy 1861 
 Ehrlich ®. Ihlee 
 
 (C. A.) 
 
 Electric Telegraph Com- 
 pany's Patent - 
 
 lOB. &C. 826 
 
 IC. &F. 39 
 
 Holroyd, 59; Par. Eep. Pat. 1829, 
 p. 197 
 
 W. N. 1881, 160 
 
 Griff. 279 
 
 2 0. B. 201 ; 3 O. E. 94; Griff. 81 
 
 W; N. 1890, p. 149 
 
 2 Salk. 447 ; 1 Web. P. C. 35 ; Comb. 
 84 ; Dav. P. C. 36 ; 1 Carp. P. C. 35 
 
 4 0. E. 471 :. .. .. 
 
 33 Ch. D. 497 ; 3 O. R. 395 ; 5 0. B, 
 459 ; 4 T. L. B. 686 ; 55 L. J., Ch. 
 943 
 
 41 Ch. D. 28 ; 5 0. B. 213 ; 6 O. E. 
 243 ; W. N. 1888, 31 ; 61 L. T. 32 ; 
 5T. L.E. 294 
 
 32 Ch. D. 520; 55 L. J., Ch. 943; 
 55 L. T. 263; 34 W. B. 626; 3 
 O. E. 167; 2T. L. E. 654 ' 
 
 4 0. E. 79; 3 T. L. E. 327 .. .. 
 
 3 O. E. 183; Griff. 90; 2 T. L. E. 
 656 
 
 4 0. E. 99; 3 T. L. E. 367 .. .. 
 
 17 Cb. D. 137 ; 29 W. B. 496 
 
 W. N. 1888, 234 ; 6 O. B. 355 ; Griff. 
 281 
 
 12 W. B. 548; 3 N. E. 562 .. .. 
 
 W. N. 1888, 50; 56 L. T. 819; 4 
 O. E. 115; 5 0. E. 37,198 
 
 5 0. B. 437 
 
 Citpd 1 Moo. P. C, N. S. 346; Good. 
 P. C. 554 
 
 Page in Digest 
 where cited. 
 
 67 (fe) 
 67(A) 
 54(/) 
 
 521 (e) 
 
 44(d) 
 
 199 (d); 392 
 (m); 484(a); 
 579 (a) 
 
 404 (?) 
 
 144(3); 272 
 (S);571(r) 
 
 292 (o) 
 163 (J) 
 
 92 (x); 289 
 (c);394(p); 
 435(/);510 
 (a) 
 
 444(5) 
 
 509 (y) 
 
 434 (c) ; 365 
 
 («') 
 434 (e); 485 
 
 (6); 532(A) 
 
 305(3); 389 
 (A) 
 
 46 (i); 353 
 (m) ; 395 
 («) ; 403 (j) 
 
 370 (o) 
 
 305 (0; 580 
 
 («) 
 2110 (ft); 228 
 
 (s); 259 (y); 
 
 532 (A*) 
 
 114 (b) 
 
Table of Cases. 
 
 xxvii 
 
 Name of Case. 
 
 Electric Telegraph .Comr 
 pany v. Brett 
 
 (C. P.) 1851 
 
 •II. Nott .. 
 (V.-O.) 1847 
 
 (0. P.) 1817 
 
 (L. C.) 1847 
 Elgie e. Webster ..1839 
 Ellington v. Clarke (0. A.) 
 
 Elliott V. Aston 
 
 (N. P.) 1840 
 
 -, V. Turner 
 
 (Ex. Oil.) 1845 
 
 EUwood V. Christy . . 
 
 (C. P.) 1864 
 
 (0. P.) 1865 
 Elmslie ». Boursier . . 1869 
 
 Elseyi). Butler .. ..1886 
 Erard's Patent, In re 1835 
 
 Evans and Otway's Patent 
 E veritt's Application 
 
 Fairbnrn v. Household 
 
 Farquharson, Ex parte . . 
 1872 
 
 Tawcett's Patent, In re . . 
 1852 
 
 ..1889 
 
 Feather i). Eeg 1865 
 
 Felton V. Greaves 
 
 (N. P.) 1829 
 
 Pernie v. Young 
 
 Reference. 
 
 10 0. B. 838 ; 20 L. J., 0. P. 123 ; 15 
 Jur. 579 
 
 UJur. 273 ;; .. .. 
 
 4 0. B. 462 ; 11 Jur. 590 ; 16 L. J., 
 C. P. 174 
 
 2 Coop. 41 :. .. 
 
 5M. &W. 518 
 
 5 0. E. 135, 319; 58 L. T. 818" .. 
 
 IWeb. P. 0. 222 
 
 2 0. B. 446 ; 15 L. J., 0. P. 49 .. 
 
 17 0. B., N. S. 754 ; 84 L. J., 0. P. 
 130; 13 W. R. 54; 11 L. T. Eep., 
 N. S. 342 ; 10 Jur., N. S. 1079 ; 5 
 N. E. 12 
 
 13 W. E. 498 ; 18 C. B., N. S. 494; 
 34 L. J., 0, P. 130; 5 N. E. 312 
 
 L. E., 9 Eq. 217 ; 39 L. J., Ch. 328 ; 
 
 18 W. E. 665 
 1 0. E. 188; Griff. 96 
 
 1 Web. P. 0. 557 ; 5 Eep. Arts, N. S. 
 58 
 
 Griff. 279 
 
 2 6riff. 27, 28 
 
 1 O. E. 109 ; 2 0. E. 140, 195 ; 3 0. E. 
 
 128,263; Griff. 96 
 
 L. E., 8.Ch. 167; 42 L. J., Ob. 363; 
 21 W. R. 233 
 
 2 De G., M. & G. 439 ; 19 L. T. Eep. 
 237 
 
 Good. Prao. 10 
 
 6 B. & S. 257; 35 L. J., Q. B. 200; 
 12 L. T., N. S. 114 
 
 3 0. & P. 611 
 
 See Young v. Pernie (H. L.) .. 
 
 Page in Digest 
 wliere cited. 
 
 68 (0: 173 
 (ft); 188(3): 
 287 (p); 466 
 (6);497(»); 
 560 (m) 
 
 359 (g) 
 295 (y) 
 339 (») 
 
 207 (i) 
 
 182 (i); 382 
 (S); 393(A) 
 
 267 («/); 426 
 id) 
 
 463 (m) 
 
 69 (s) 
 
 370 (r); 386 
 151 (c); 164 
 
 299 (o) 
 
 108 it); 130 
 (s); 139 (i) 
 
 44(c) 
 
 38(d); 48(5) 
 
 353 (0; 453 
 («*) ; 485 
 (a); 487(0*) 
 
 56(») 
 40 (i) 
 
 53(e) 
 
 79 (m); 149 
 (s); 150 (x) 
 
 424(«/); 563 
 
 it) ' 
 355 (a:); 378 
 
 iw) 
 
XXVlll 
 
 Tahle of Oases. 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 Fiechter's Application (see 
 Edmund's Patent) 
 
 Pinlay«. Allan .. ..1857 
 Finnegan v. James . . 
 
 Fisher «. Dewiok 
 
 (N. P.) 1838 
 V. 
 
 (0. P.) 1838 
 
 (0. P.) 1838 
 Fletcher's Application 
 Fletcher v. Arderi .'. 
 
 V. Grlasgow Gas 
 
 Commissioners 
 Flower v. Lloyd 
 
 (V.-C. B.) 1876 
 
 (Field, J.) 1876 
 
 (C. A.) 1876 
 
 (V.-C. B.) 1877 
 
 (V.-C. B.) 1877 
 
 (C. A.) 1877 
 Foarde's Patent, In re 1855 
 Forsyth v. Kiviere . . 1819 
 
 Fowler D. Gaul .. ..1886 
 Fox, Ex parte .. ..1812 
 
 V. Dellestable . . 1866 
 
 Foxwell V. Bostock . . 
 
 (L. C.) 1864 
 
 ■ V. Webster . . 
 
 (L. C.) 1863 
 
 Griff. 284 
 
 19 Dec. of Crt. of Sess., 2ud Series, 
 1087 
 
 L. R., 19 Eq. 72 ; 44 L. J., Oh. 185 
 Cit. 8 Q. B. 1056 
 
 4 Bing. N. C. 706 ; 6 Dowl. 739 ; 1 
 - Web. P. C. 264; 6 Scott, 587; 1 
 
 Am. 282; 7 L. J., C. P. 279 
 
 1 Web. P. C. 551 (n.) 
 
 2 Griff. 30 
 
 5 0. E. 46 .. .. 
 
 4 0. R. 386 
 
 W. N. 1876, 169, 230 
 
 Solicitor's Journal, 1876, p. 860 .. 
 
 45 L. J., Ch. 746 ; 35 L. T. Rep., 
 
 N. S. 454 ; 25 W. R. 17, 793 
 
 W. N. 1877, 71 ; Johnson's ip. M. 
 245 
 
 36 L. T. Rep., N. S. 444 .. ..' .. 
 
 W. N. 1877, p. 132; Johnson's P. M. 
 ■ 245; lOCh. D. 327 
 
 9 Moo. P.O. 0.876 
 
 Chit. Prerog, Or. 182 ; 1 Web. P. C. 
 97 ; 1 Carp. P. 0. 401 
 
 Griff. 99; 3 0. E. 247 
 
 1 V. & B. 67 ; 1 Web. P. 0. 431 .. 
 
 15 W. R. 194 
 
 (V.-C.) 1863 
 
 12 W. R. 723 ; 10 L T. Rep., N. S., 
 144 ; 4 De G., J. & S. 298 ; 3 N. R. 
 546 
 
 12 W. E. 94 : 9 L. T. Rep., N. S. 362 
 9 Jur„ N. S. 1189 ; 3 N. E. 103 
 
 4 De G., J. & S. 77 : 9 L. T. Rep., 
 N. S. 528 ; 12 W.R. 186 ; 10 Jur., 
 N. S. 137 ; 3 N. E. 103, 180 
 
 46 0') 
 174 (») 
 
 297 (gy, 304 
 W 
 567 (e) 
 
 300 (s) 
 
 307 (y); 508 
 (J): 814 (2,). 
 
 53(6) 
 
 258 (s) ; 393 
 
 («) 
 200 0'); 479 
 
 (0 
 329 (i) 
 
 811 (o) 
 
 304 (o) 
 
 194 (s) 
 
 831 (tt) 
 
 194 (s) 
 
 129 (o) 
 
 184 (o); 272 
 (»);460(fe) 
 
 318 (») 
 
 43(2): 56 (r): 
 486 (e); 
 520 (a) 
 
 371 («) ; 520 
 id) 
 
 16 (g); 412 
 (g); 430(8); 
 449 (6) ; 486 
 (0;504C?*) 
 
 320 (y) 
 293 (u) 
 
TaUe of Gases. 
 
 XXIX 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 Prearson e. Loe 
 
 (M. B.) 1878 
 
 Furness' Patent .. 
 
 Fusee Vesta Company 
 Bryant and May 
 
 CNo. 2) 
 
 Galloway v. Bleaden . . 
 
 (N. P.) 1839 
 
 .1839 
 
 Galloway's Patent, In re . . 
 1843 
 
 Gamble v. Kurtz 
 
 .1846 
 
 Gandy v. Eeddaway . . 
 
 Gardner v. Broadbent 1856 
 
 Gares' Patent, In re 1884 
 Garrard v. Edge (C. A.) ,. 
 
 Garthwaite's Patent .. 
 Gaulard «. Liadsay .. 
 Geary v. Norton . . 1846 
 George v. Beaumont . . 1815 
 
 Germ Milling Company ■». 
 Kobinson 
 
 (C. A.) 
 
 Gething's Patent, In re 1874 
 
 Gibson v. Brand 
 
 (,N. P.) 1841 
 
 (0. P,) 1842 
 
 L. R., 9 Oh. D. 48 ; 27 W. B. 183 
 
 Griff. 260; 2 O. B. 175 
 
 34 Ch. D. 458 ; 37 Ch. D. 120 (d.) ; 
 
 3 T. L. E. 285 ; 56 L. J. Ch. 187 ; 
 
 56L.T.110; 40.B.71; 35W.E. 
 
 267 
 56 L. T. 136 ; 3 T. L. E. 408 ; 4 
 
 O. B. 191 
 
 1 Web. P. C. 521 
 
 1 Web. P. C. 268 (n.) 
 
 1 Web. P. C. 724; 7 Jur. 453 
 
 3 C. B. 425 , 
 
 Griff. 101; 2 0. E. 49 
 
 2 Jur., N. S. 1041 ; 4 W. E. 767 . . 
 
 26Ch. D. 105; Griff. 309 .. .. 
 
 44 Ch. D. 224; 58 L. J. Ch. 397; 
 
 59 L. J., Ch. 379; 60 L. T. 557; 
 
 6 0. B. 372, 563; 37 W. B. 501; 
 
 62L. T. 510; 38 W. E. 455 
 
 Griff. 284 
 
 See Goulard and Gibbs v. Lindsay . . 
 IDeG. &S. 9 
 
 27 Bep. Arts, 2nd Series, 252; 1 
 
 Carp. P. C. 295 
 55L. J.Ch. 287; 53 L. T. 696; 34 
 • W. E. 194 ; 2 T. L. B. 785 ; 1 0. R. 
 
 217; 3 O. E. 11, 254; Griff. 103; 
 
 IT.L.B. 38 
 
 3 0. E. 399 
 
 L. B., 9Ch. 633.. 
 1 Web. P. C. '627 
 
 4 M. & G. 179 ; 4 Seott, N. R. 844 ; 
 1 Web. P. C. 631 ; 11 L. J., 0. P. 
 
 17-7 
 
 95 (o); 160 
 (e); 232(e); 
 332(m)); 578 
 (^) 
 
 127 (/) 
 
 22(3) 
 
 551 (w) 
 
 154 (d); 262 
 (/);362(/); 
 426(c); 440 
 («) 
 
 308 (e) 
 
 101 (A); 121 
 (e);128(i;); 
 130 («) 
 
 187 (c); 
 («,) 
 
 459(A); 
 
 (X) 
 
 341(A); 
 (s) 
 12(D) 
 183 (I); 
 
 456 
 
 484 
 
 360 
 
 330 
 (b) ; 395 (») 
 
 45(/) 
 22 (70 
 384 (n) 
 286 (J); 335 
 
 316 (gr); 829 
 (&) 
 
 379 (a) 
 
 41(0 
 
 163 (V); 262 
 (?);266(r); 
 274 (r); 427 
 (ft*) 
 
 6(e); 157 («): 
 230 (2); 447 
 (s); 456(c); 
 462 (2); 513 
 (/) 
 
xxx 
 
 Table of Cases. 
 
 Nafne of Case. 
 
 Reference. 
 
 Page in Digest 
 wnere cited. 
 
 r Gillett V. Gree? , . . . 18il 
 
 7 M. & TV. 347 ; 9 Dowl. 219 ; 1 Web. 
 P. C. 271 ; 10 L. J., Exch. 124 
 
 383 (to) 
 
 B. Wilby 
 
 9 C. & P. 334 ; 1 Web. P. C. 270 .. 
 
 172 id) ; 301 
 
 (N. P.) 1839 
 
 
 (u) ; 383 (fc) 
 
 Gittins i;. Symea -..1854 
 
 3 C. L. Kep. 251; 15 C. B. 362 ;-24 
 L. J., C. P. 48 
 
 331 (o) 
 
 Glossop's Patent .. .. 
 
 Griff. 285 
 
 32(|/);48(tt) 
 
 Goanell v. Bishop 
 
 4T. L. E. 397; 5 0. K; 41, 151 .. 
 
 200 (0; 227 
 (»•); 500 (d) 
 
 'Gouoher ». Clayton .. 
 
 llJur.,N.S.107; 34 L. J., Ch. 239 ; 13 
 
 91(8) 
 
 (V.-C.) 1865 
 
 W. E. 336; 11 L. T. Eep-.N. S.732 
 
 
 ' 
 
 11 Jur., N. S. 462 ; 13 L. T. Eep., 
 N. S. 115 ; 34 L. J.. Ch. 239; 13 
 
 160 (c); 214 
 (e) 
 
 (V.-C.) 1865 
 
 
 W. E. ZAG 
 
 
 Goucher's Patent, In re . . 
 
 2 Moore, P. C. C, N. S. 532 .. .. 
 
 106 (0; 129 
 
 1865 
 
 
 « 
 
 Goulard & Gibbs'a Patent 
 
 34 Ch. D. 396; W. N. 1887, 211; 
 
 21 (/): 317 
 
 
 W. N., 1888, 168 ; 56 L. J., Ch. 
 
 (m); 544(0 
 
 
 606; 5 0. E. 189, 525 ; Griff. 320 
 
 
 
 57 L. J., Ch. 209 ; W. N., 1889, 60; 
 
 404 (J); 421 
 
 
 (C.A.) 
 
 6 0. E. 215 
 
 (fc) 
 
 Goulard and Gibbs Patent 
 
 7 0. R. 367 
 
 Eeported 
 
 (Aff. in H. L.) 
 
 
 since going 
 to Press 
 
 Goulard and Gibbs v. 
 
 38 Ch. D. 38 ; 56 L. T. 506 ; 4 0. E. 
 
 22 Qi); 551 
 
 Lindsay 
 
 189 
 
 W 
 
 
 5 0. E.192; 57L. J., Ch. 687 
 
 22 (ft) 
 
 (C. A.) 
 
 Gozney's Application 
 
 5 0. E. 597 
 
 51(0) 
 
 Gran ger, Ex parte ..1812 
 
 Godson on Patents, 2nd ed. p. 225 .. 
 
 66(/);73(ft) 
 
 Greaves v. Eastern Counties 
 
 1 Ell. & Ell. 961 ; 28 L. J., Q. B. 
 
 316 (/) ; 384 
 
 Railway 1859 
 
 290 ; 5 Jur., N. S. 733 
 
 («) 
 
 .Green's Patent, In re 1857 
 
 24BeaT. 145 
 
 399 («) 
 
 ioo£; 
 
 Griff. 286 
 
 48(1/) 
 
 
 * Greer v. Bristol Tanning 
 
 2 0. E.268 
 
 348 (r) 
 
 Company 
 
 
 
 GriflSn «. Feaver .. .. 
 
 6 0. E. 396 
 
 317 (y) 
 
 Griffin's Application. 
 
 6 0.il.296 
 
 47(») 
 
 Griffitbs's Patent, In rel846 
 
 Cit. Hind, on Pat. 534 
 
 40 
 
 Grnver and Baker Sewing 
 
 8 Jur., N. S. 713 
 
 90 (m); 382 
 
 ; MachiDB Company v. 
 
 
 (ft) 
 
 Millaid 1862 
 
 
 
 V. Wilson 
 
 W. N. 1870, p. 78 
 
 311 (m*) 
 
 Guest and BaiTow's Patent 
 
 5 0. E. 312 
 
 50 (m) 
 
 GuUbert Martin v. Kerr .. 
 
 3T. L. R. 87; 4 0. E. 18 .. .. 
 
 241 (ic); 391 
 (v) 
 
 Gwynne v. Drysdale . . 
 
 2 0. E. 160; 3 0. E. 65 
 
 171 (6) 
 
Table of Cases. 
 
 XXXI 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digpst 
 where cited. 
 
 Haddan'a Patent ..1885 
 1884-5 
 
 Hadden »., Smith ..1847 
 
 Hall V. Boot and Jarvis . . 
 (N. P.) 1822 
 
 V. Oonder (C. P.) 1857 
 
 (Ex. Ch.) 1857 
 Hall, In re 
 
 Hall and Hall's Patent .. 
 Hal sey «. Brotherhood .. 
 
 (G. A.) 
 
 Hampton and Facer's Pa- 
 tent 
 Hancock «. BewTey '..1860 
 ». Moulton ..1852 
 
 ■ ». Somervell 
 
 (N. P.) 1851 
 
 Hardy's Patent,- In re 1849 
 
 Harmar t!. Playne .. .. 
 (K. B.) 1809 
 
 Harmer v. 
 
 .(Ch.)1807 
 
 Harris 1). Both well .. 
 -V. (0. A.) 
 
 Harris's Patent, In re 1855 
 
 Harrison's Patent, In re . . 
 1853 
 
 1874 
 
 Harrison v. Spire . . 1853 
 
 V. The Anderston 
 
 Foundry Company 
 
 (H. L.) 1876 
 
 2 Griff. 12 ... .. .. 
 
 54 L. J. Ch. 128; 51 L. T. 190; 83 
 W. R. 96; W. N., 1884, 192; 2 
 0. E. 218 
 
 17L. J, Ch. 43 
 
 1 Web. P. C. 100; 1 Carp. P. C. 423 
 
 2 C. B., N. S. 22 ; 3 Jur., N. S. 366 ; 
 26 L; J., C. P. 138 ; 5 W. E. 491 
 
 3 Jur., N. S. 963 ; 5 W. E. 742 ; 2 
 C. B., N. S. 53 ; 26 L. J., C. P. 288 
 
 21 Q. B. D. 137 ; 5 0. E. 307 ; 57 
 L. J. Q. B. 494; 59 L. T. 37; 36 
 W. E. 892 
 
 5 0. E. 283 
 
 15 Ch. D. 514 ; 49 L. J. Ch. 786 ; 43 
 L. T. 366 ; 29 W. E. 9 
 
 19 Ch. D. 386 : 51 L. J. Ch. 233 ; 45 
 L. T. 640 ; 30 W. E. 279 
 
 2 Griff. 13 
 
 John. 601 
 
 Johnson's Patentees' Manual, 3rd ed. 
 ■ p. 208; M. Dig. 506 
 
 39 Newton's Lond. Jour. 158 .. .. 
 
 '6 Mbo. P. C. C. 441 ; 13 Jtir. 177 .. 
 
 11 Bast, 101 ; Dav. P. C. 311 . . .. 
 
 14Ves. 130 
 
 W. N., 1886, 166 ; 3 0. E. 243, 383 ; 
 3 T. L. E. 553 ; Griff. 109 
 
 35 Ch. D. 416; 56 L. T. 5, 52; 35 
 W. E. 581; W. N., 1887,' 82; 4 
 O. E. 225 ; 56 L. J. Ch. 459 
 
 25L. T. Eep.90 
 
 Macr. P. C. 31 
 
 ■li. E., 9 Oh. 631 
 
 22L. T.Eep. 92 
 
 2 Sc. L. E., 4th Series, 857 . . . . 
 
 L. E., 1 App. Cas. 574 .. .. .. 
 
 11(9) 
 
 323 (7c); 403 
 (/) 
 
 367 (A) 
 365(«); 512 
 
 68(?i) 
 
 68 (re) 
 
 14(/) 
 
 48(c) 
 547 Qi) 
 
 547 (&) 
 
 14(e) 
 
 207 (I) 
 
 341(/); 347 
 Q); 188 (fc) 
 
 236(»); 266 
 
 it) 
 101 (J); 122 
 
 (i); miw) 
 
 422(2); 446 
 (m) 
 
 335 {d) 
 313 (v) 
 259 (a) 
 
 59 (J); 558 
 ik) 
 
 19(a;) 
 
 56 (o) 
 
 326 (2/») 
 180 (d) 
 
 180 (^d) ; 450 
 (3); 473(2) 
 
xxxai 
 
 Table of Cases. 
 
 Nairie of Case. 
 
 Page In Digest 
 where cited. 
 
 Hartley's Case ., 
 
 Harvie 17. Eoss 
 
 Harwood v. Great Northern 
 Kailway Co. (Q. B.) 1860 
 
 V. . . 
 
 (Ex. Ch.) 1862 
 
 (H. L.) 1865 
 
 Haslam Foundry and En- 
 gineering Co. V. Hall 
 
 (0. A.) 
 
 V. CrOodfeUoW 
 
 Hassall v. Wright . . 1870 
 
 Hastings v. Brown . . 1853 
 
 Hastings' Patent . . 1567 
 
 Hatfield's Patent 
 Haworth v Hardoastle 1834 
 
 Haydock u. Bradbury 
 
 Hayne ». Maltby ..1789 
 
 Hay thorn thwaite's Appli- 
 cation 
 
 Hay ward v. Hamilton 
 
 V. The Pavement 
 
 Light Company 
 
 Healey's Application 
 
 Heap ®. Hartley 
 
 Hearson's Patent- 
 
 ..1884 
 
 Heath and Frost's Patent 
 
 ■ 1886 
 Heath u. Smith (Q. B.)1854 
 
 • V. Unwin 
 
 (Bxoh.) 1842 
 
 2 H, Bl. 493 ; 1 Web. P. C. 54 .. 
 
 4 0. K.234 
 
 29 L. J., Q. B. 193 ; 6 Jur., N. S. 993 
 
 31 L. J., Q. B. 198; 8 Jur., N. S. 
 1126 ; 6 L. T. Kep;, N. 8. 190 ; 10 
 W.B. 422 
 
 11 H. L. Cas. 654 ; 35 L. J., Q. B. 
 27; 12 L. T. Kep., N. S. 771 ; 14 
 W.Rl 
 
 5 0. E. 1 ; 4 O. K. 203 ; 36 W. K. 407 
 
 20 Q. B. D. 491 ; 57 L. J. Q. B. 352 ; 
 5 0. E. 144 : 59 L. T. 102 
 
 .37 Oh. D. 118; 5 0. E. 28; 57 
 L. J. Ch. 245 ; 57 L. T. 788 ; 36 
 W. E. 391 
 
 L. E,, 10 Eq. 509 ; 18 W. E. 821 ; 40 
 L. J., Ch. 145 
 
 1 E. & B. 450 ; 22 L. J., Q. B. 161 ; 
 
 • 17Ju:'.-647 
 
 Noy, E. 182 ; 1 Web, P. C. 6 .. .. 
 
 Griff. 288 
 
 1 Web. P. C. 480 ; 4 M. & Sc. 720 ; 1 
 
 Bing. N. C. 182; 3 L. J., C. P. 311 
 
 4.0. E. 74 
 
 3 T. K. 438 ; Dav. P. C. 156 .. .. 
 7 0. K. 70 
 
 .Griff. 121 .. 
 
 1 0. E. 207 ; Griff. 124 
 
 John, 165 
 
 42 Ch. D. 461 ; 58 L. J., Ch. 790 ; 5 
 T. L. E. 710 ; 38 W. E. 136 ; 41 
 li. T. 538 ; 5 0. E. 603 ; 6 O. K. 495 
 
 Griff. 266 
 
 Griff. 309; 1 0. E. 213 
 
 Griff: 288 V 
 
 Griff. 311 
 
 3 Ell. & Bl. 256 ; 2 C. L. E. 1584 ; 18 
 Jur. 601 ; 23 L. J., Q. B. 166 ; 2 
 Web. P. C. 268 
 
 10 M. &. W. 684 ; 2 D., N. S. 482 ; 6 
 Jur. 1068; 12 L. J., Exch. 46; 1 
 Web. P. C. 551 
 
 522 (I) 
 333 («) 
 498 (g); 238 
 
 538 (r) 
 
 238 (r); 534 
 («) 
 
 323 (m) 
 
 393 (g) 
 21 (e*) 
 
 215 (h) ; 288 
 (y): 400(0) 
 
 467(/); 486 
 0') 
 
 144(d); 222 
 («) 
 
 56(?) 
 
 460 0'); 578 
 (») 
 391 («) 
 87(a) 
 53(/) 
 
 508 (t) 
 197(2/) 
 
 43 (d) 
 
 218 (r): 401 
 (c) 
 
 271 (e) 
 20(2/) 
 42 (t!) 
 17(0 
 
 54 (0; 237 
 
 (0) 
 
 308 (/) ; 314 
 (a) 
 
TaMe of Oases. 
 
 xxxiu 
 
 Name of Case. 
 
 Heath v. Unwin 
 
 (N. P.) 1843 
 
 V. 
 
 (Excli.) 1845 
 
 (V.-C.')'l847 
 
 V. 
 
 (Ex. Ch.) 1852 
 
 V. . . . . ... 
 
 (H. L.) 1855 
 
 Heath's Patent, In re 1853 
 
 Heathorn's Patent, In re . . 
 1864 
 
 Helliwell v. Dearman 1842 
 
 Henderson v. Clippens Oil 
 Company (H. L.) 1883 
 
 Henderson v. Kunoom Soap 
 iind Alkali Comp. 1868 
 
 V. Mostyn Copper 
 
 Company, Limited 1868 
 
 Henry, Ex parte ..1872 
 
 Henson, Ex parte . . 1832 
 
 Herbert's Patent, In re . . 
 1867 
 
 Herburger Schwander & 
 Cie. V. Squire 
 
 Hersee and Smyth, In re . . 
 1866 
 
 Hesse B. Stevenson ..1808 
 
 Heugh V. Chamberlain 
 
 (M. E.) 1877 
 
 V. Magill 
 
 (M. K.) 1877 
 
 Heurteloup's Patent, In re 
 
 1836 
 
 Hicks ■». Kainoock . . 1783 
 
 Higgs V. Goodwin ..1858 
 
 Hill's Application .. 
 Hill I). Mount .. ..1856 
 
 Reference. 
 
 2Web. P. C. 216 
 
 2 Web. P. 0. 221 ; 14 L. J., Exch. 
 153 ; 13 M. & W. 583 
 
 16 L. J., Ch. 283 ; 15 Sim. 552 
 
 22 L. J., C. P. 7 ; 2 Web. P. C. 236 ; 
 12 C. B. 522 
 
 5 H. L. Cas. 505 ; 16 C. B. 713 ; 25 
 L. J., C. P. 8 ; 3 W. E. 625 
 
 8 Moo. P. C. C. 217 ; 2 Web. P. 0. 
 247 ; M. Dig. 114 
 
 10 Jur., N. S. 810; 10 L. T. Eep., 
 N. S. 802 ; 12 W. E. 1068 ; 4 N. E. 
 489 
 
 1 Web. P. C. 401 (n.) 
 
 20 Scot. Law Eep. 423, 8 App. 0. 
 873 
 
 19 L. T. Eep., N. S. 277 
 
 L. E., 3 C. P. 202 
 
 L. E., 8 Ch. 167 ; 42 L. J., Ch. 363 ; 
 21 W. E 233 
 
 1 Web. P. C. 432; 2 Lond. Jour., 
 C. S. 32 
 
 L. E., 1 P. C. 399; 4 Moo. P. C. C, 
 N. S. 300 
 
 5 0. E. 581 : 6 0. E. 194 
 
 L. E., 1 Ch. 518 ; 14 L. T. Eep., 
 
 N. S. 842 
 
 3 B. & P. 565 ; Dav. P. C. 244 
 
 25W.E. 742 
 
 W. N. 1877, p. 62 
 
 IWeb. P. C. 553 
 
 2 Dick. 647 
 
 27 L. J., Q. B. 421 ; 5 Jur., N. S. 97 ; 
 Ell., Bl. & Ell. 529 
 
 5 0. E. 599 
 
 18 C. B. 72 ; 25 L. J., 0. P. 190 ; 4 
 W. E. 563 
 
 Page in Digest 
 w liere cited. 
 
 496 (0 
 
 186 (a) 
 
 202 (r); 338 
 (w) 
 
 428 (m); 442 
 (6) 
 
 202(0; 481 
 (»); 482 (r) 
 
 HO(i); 118 
 (o); 122(0; 
 131 (J/); 134 
 (i) 
 
 41 (i>) 
 
 514 (s) 
 182 (e) 
 
 356 («) 
 
 214 (/) 
 
 40; 56(») 
 
 40 (g); 43 
 (a); 56 (s) 
 
 118 (<) ; 138 
 
 (/) 
 259 (x) : 521 
 
 («); 554(d) 
 
 59 (m) 
 
 66 (e); 
 (3) 
 92(«) 
 
 73 
 
 331 it) 
 
 78; 244 (A;) 
 
 334 (a) 
 163 (w) ; 515 
 («) 
 51(p);61(ii) 
 68 (m) 
 
XXXIV 
 
 Tahle of Cases. 
 
 Name of Case. 
 
 Reference, 
 
 Page in Digest 
 where cited. 
 
 Hill V. Thompson 
 
 (L. C.) 1817 
 
 (L. C.) 1817 
 
 (C. P.) 1818 
 
 V, Tombs 
 
 V. Wilkinson . . 1817 
 
 Hills v. Evans 
 
 (L. 0.) 1862 
 
 V. Laming . . . . 1853 
 
 V. Liverpool Gas Light 
 
 Company 1862 
 
 V. London Gas Light 
 
 Company 1857 
 
 (after new trial) 1860 
 
 Hills' Patent, In re ..1863 
 
 Hinde i>. Osburn 
 
 Hinka v. Safety Lighting 
 Company (M. E.) 1876 
 
 Hkiocng & Co. v. Hocking 
 
 (H.L.) 
 
 Hocking v. Praser . . 
 
 Hoffmann v. PostUl . . 
 
 (V.-C.) 1868 
 
 (L. J.) 1869 
 
 Hoffman's Application . . 
 
 Holland t). Fox 
 
 (Q. B.) 1853 
 
 3 Mer. 622; 1 Web. P. C. 229; 1 
 Carp. P. C. 377 
 
 3 Mer. 626 ; 1 Web. P. C. 235.. .. 
 
 2 B. Moo. 424 ; 8 Tannt 375 ; 1 Web. 
 P. C. 239 
 
 John. 82 
 
 2 Coop. 57 (u.) 
 
 31 L. J., Ch. 457 ; 8 Jur., N. S. 525 ; 
 
 6 L. T. Eep., N. S. 90 ; 4 De G., 
 F. & J. 288 
 
 9 Exch. 256 ; 23 L. J., Exch. 60 . . 
 
 9 Jut., N. S. 140 ; 32 L. J., Ch. 28 ; 
 
 7 L. T. Eep., N. S. 537 
 
 27L. J., Ex.60 
 
 5 H. & N. 312 ; 29 L. J., Ex. 409 .. 
 
 1 Moo. P. C. C, N. S. 258; 9 Jnr., 
 N. S. 1209 ; 12 W. E. 25 ; 9 L. T. 
 Eep., N. S. 101 
 
 Griff. 125 ; 1 0. E. 221 ; 2 0. E. 45, 64 
 
 L. E., 4 Ch. D. 607 ; 46 L. J., Ch. 
 185 ; 36 L. T. Eep., N, S. 391 
 
 3 O. E. 291 ; 4 0. E. 255, 434 ; Griff. 
 129 
 
 6 O. E. 69 
 
 3 0. E. 3; Griff. 129 
 
 19 L. T. Eep., N. S. 276 
 
 L. E., 4 Ch. 673; 17 W. E. 901 ; 20 
 L. T. Eep., N. S. 893 
 
 7 0. E. 92 
 
 1 W. E. 448; 1 C. L. Eep. 440 .. 
 
 335(/); 345 
 (2/); 3580); 
 501 (2) 
 
 335 (/) ; 423 
 (s);455(r); 
 580 id) 
 
 171(c); 183 
 («);224(e)r 
 228 (»); 244 
 (0:447(j); 
 566(6); 572 
 
 (2) 
 
 538 (0 
 358 (i:) 
 
 249(2); 342 
 (A);369(«); 
 470 (p); 490 
 (») 
 
 159 (a) 
 
 468 0') 
 
 243(/); 248 
 ixy, 263(i); 
 429(r); 469 
 
 ■(0;488(®); 
 498 (j-^; 516 
 (o);561(m*) 
 
 115(e); 123 
 (9); 132(o); 
 142 (2) 
 
 379(2); 381 
 
 431 (j/) ; 473 
 (.y): 483(0; 
 507(g); 577 
 («) 
 
 199 (ft); 478 
 0') 
 183 (&) ; 478 
 
 (;■) 
 
 391 (s) 
 356 (3,) 
 
 321 (e) 
 
 51(«) 
 309 (j) 
 
Table of Cases. 
 
 XXXV 
 
 Name of Case. 
 
 Page in Digest 
 where cited. 
 
 Holland II. Fox 
 
 (Q. B.) 1854 
 
 Holliday v. Heppenstall . . 
 (C. A.) 
 
 Hollins V. Capper & Co. . . 
 
 Holmes v. London and 
 North Western Eailway 
 Company 1852 
 
 Holste V. Robertson . . 
 
 (C. A.) 1876 
 
 Homan's Application 
 
 Honiball v. Bloomer . . 
 
 (N. P.) 1854 
 
 . V. . . 1854 
 
 Honiball's Patent, In re . . 
 1855 
 
 Hookbam's Application . . 
 
 Hoop, Ex parte . . . . 1802 
 
 Hornblower v. Boulton . . 
 1799 
 
 Hornby's Patent, In re 1853 
 
 Horroclss v. Stubbs . . 
 
 Horsey's Patent 
 
 Horsley and Knighton's 
 Patent, In re 
 
 (M. E.) 1869 
 
 (L. J.) 1869 
 
 Horton v. Mabon 
 
 (C. P.)_1862 
 
 (Ex. Ch.) 1864 
 
 HosMn's Patent 
 
 Houghton's Patent, In re 
 1871 
 
 Househill Iron Company v. 
 Neilson (K, P.) 1842 
 
 2 C. L. R. 1576 ; 3 Ell. & Bl. 977 ; 1 
 Jur., N. S. 13 ; 23 L. J., Q. B. 357 
 
 41 Ch. D. 109 ; 37 "W. R. 662 ; 6 0. R. 
 320 ; 61 L. T. 313; 58 L. J., Ch. 829 
 
 5 0. R. 289 
 
 Macrory's P. C. 13 ; 22 L. J., C. P. 
 57 : 12 C. B. 831 
 
 L. R., 4 Ch. D. 9 ; 46 L. J., Ch. 1 ; 
 35 L. T. Rep., N. S. 457; 25 
 W. E. 35 
 
 6 0. R. 104 
 
 2 Web. P. C. 199 
 
 10 Exch. 538 ; 1 Jur., N. S. 188 ; 24 
 L. J., Exch. 11 ; 3 W. E. 71 ; 3 
 C. L. Eep. 167 ; M. Dig. 46 
 
 9 Moo. P. C. C. 378 ; 2 Web. P. 0. 
 201 ; 3 Eq. Eep. 225 ; M. Dig. 164 
 
 2 Griff. 32 
 
 6 Ves. 598 
 
 8 T. E. 95; Dav. P. C. 221 ; 1 Carp. 
 P. 0. 156 
 
 7 Moo. P. C. C. 503 ; 1 C. L. Eep. 
 519 
 
 3 0. E. 221 
 
 lO.E. 225; Griff. 261 
 
 L. E. 8 Eq. 475 ; 17 W. E. 1054 ; 21 
 L. T. Rep., N. S. 345; 39 L. J., 
 Ch. 157 
 
 li. E., 4 On. 784 ; 17 W. E. lOOO . . 
 
 12 C. B., N. S. 437 ; 31 L. J., C. P. 
 255 ; 10 W. E. 582 ; 6 L. T. Eep., 
 
 N. S. 289 
 
 16 C. B., N. S. 141 ; 12 W. E. 491 ; 
 9 L. T. Eep., N. S. 815 ; 4 N. E. 66 
 
 Griff. 291 
 
 L. E., 3 P. C. 461 ; 7 Moo. P. C. C, 
 
 N. S. 309 
 
 IWeb. P. C. 676 
 
 368 (h) 
 313 (a;) 
 
 267 (m>) 
 
 429 (p) ; 448 
 (») ; 467 (<J) 
 
 291 (0 
 
 46 (m) 
 266 («) 
 
 315 (e) 
 
 78; 106 0'): 
 111 (I) ; 135 
 
 G); i« (2/); 
 
 151(6); 276 
 (2/) 
 48(«)); 50 (ft) 
 
 60 (p) 
 
 422 (o); 445 
 (I); 493(e); 
 511 (d); 519 
 (z); 560 (ft) 
 
 141 (i)) 
 
 418 (/) 
 127(e) 
 400 (y) 
 
 400(2,) 
 533 Qe) 
 
 533 (JO 
 
 44(e) 
 
 112 (0 ; 125 
 (") 
 
 l(c);427(«); 
 462 (s); 541 
 (6); 560(0 
 
XXX VI 
 
 Table of Gases. 
 
 Name of Case. 
 
 Reference, 
 
 Page in Digest 
 where cited. 
 
 Househill Iron Company v. 
 NeUson (H. L.) 1843 
 
 Household and Kosher v. 
 Pairburu imd Hall 
 
 How V. M'Kernan . . 1862 
 
 Huddart i;. Grimshaw 
 
 (N. P.) 1803 
 
 Hughes's Patent, In re . . 
 (P. 0.) 1879 
 
 Hull®. Bollard ..1856 
 
 Hullett i>. Hague ..1831 
 
 Humpherson v. Syer . . 
 
 (0. A.) 
 
 Humphrey's Patent .. 
 
 Hutchinson's Patent, In re 
 1861 
 
 Hutchison v. Pat'tullo 
 
 Huth's Patent . 
 Hyde v. Palmer 
 
 V. Trent . 
 
 ..1863 
 
 Jackson v. Needle . . 1884 
 V. "Wolstenhulmes 
 
 Jensen v. Smith 
 
 Jessop's Case before 1795 
 
 Johnson's Patent, In re .. 
 1871 
 
 Johnson's Patent, In re . . 
 (M. E.) 1877 
 
 and Atkinson's 
 
 Patent 1873 
 
 Johnson v. Ey lauds . . 
 
 9 C. & F. 788 ; 1 Web. P. C. 673 
 
 51 L. T. 498 ; Griff. 131 ; 10. K. 109 ; 
 2 0. K. 140 
 
 SOBeav. 547 
 
 Dav. P. C. 265 ; 1 Web. P. C. 85 ; 1 
 Carp. P. C. 200 
 
 L. E., 4 App. Gas. 174 ; 48 L. J., 
 P. C. 20 ; 27 W. E. 493 
 
 1 H. & N. 134; 25 L. J.. Bxch. 304 
 
 2B. & Ad. 370 
 
 4 0. E. 184, 407 
 
 Noy, E. 183 ; 1 Web. P. C. 7 .. 
 14 Moo. P. C. C. 364 
 
 4 0. E. 329; 5 0. K. 351 
 
 Griff. 292 
 
 3B. &S. 657 ; 11 W. E. 433:7 L.T. 
 Eep., N. S. 823 ; 32 L. J., Q. B. 126 
 
 John, 79 
 
 Griff. 132 ; 1 0. E. 174 ; 2 0. E. 191 
 Griff. 134; 1 0. E. 105 
 
 Griff. 136: 2 0. E. 249 
 
 Git. 2 H. Bl. 489 : Day. P. 0. 182, 
 203 ; 1 Web. P. C. 42 (n.) 
 
 L. E., 4 P. C. 75 ; 8 Moo. P. C. C, 
 N. S. 282 
 
 L. E., 5 Oh. D. 503 ; 46 L. J., Ch. 555 
 
 13 Oh. D. 398 (n.) 
 
 L. K., 5P. C. 87 
 
 Griff. 138 
 
 235 (V); 245 
 (m) ; 263 
 (A) 
 
 550 (r) 
 
 320 (k) 
 223(6); 365 
 
 («):4370'): 
 
 455 (p); 501 
 (!/); 512(a); 
 571 (v) 
 
 119 (»*) 
 
 302(c); 310 
 (m) 
 
 225(/); 460 
 (0 
 241 iy) 
 
 222 (mi) 
 104 (a) ; 105 
 
 (/*): 107 (s); 
 
 123 (o); 139 
 
 (m) 
 
 3.56(6); 420 
 Qi*); 479 
 (m) 
 
 52(«) 
 
 362 (70 
 
 533 0') 
 
 344 (0 
 
 478(3); 483 
 (w) 
 
 257 (n) ; 521 
 (/) 
 149 (») 
 
 104(c); 125 
 (»): 142(6) 
 
 30 (m) 
 
 42(») 
 126(0); 135 
 
 (P) 
 192 («) ; 531 
 
 (e) 
 
Table of Oases. 
 
 xxxvii 
 
 Name of Case. 
 
 Jones V. Berger . 
 
 .1843 
 
 V. Heaton 
 
 B. Lees .'. ..1856 
 
 B. .. ..1856 
 
 V. Pearoe (Ch.) 1831 
 
 V. 
 
 (N. P.) 1832 
 
 V. Pratt or P]att . . 
 
 1861 
 
 Jones's Patent, In re 1840 
 
 , Inre 1854 
 
 Application . . 
 
 Patent 
 
 Application . . 1885 
 
 Jordan v. Moore . . 1866 
 
 Jupe B.Pratt .. ..1837 
 
 .Kaye v. Chubb 
 
 V. .. (H. L.) 
 
 Kay V. Marshall 
 
 (L. C.) 1836 
 
 (m!k.)"i836 
 
 (C. P.)' 1839 
 
 (H. L.)'l84i 
 Kay's Patent, In re . . 1839 
 
 Kelly V. Heathman ..1890 
 
 Kenny's Patent Button- 
 holeing Compimy v. 
 Somerville & Lutwjohe 
 (V.-C. B.) 1878 
 
 Reference. 
 
 5 M. & O. 208 ; 1 Web. P. 0. 544 ; 6 
 Scott, N. E. 208; 7 Jur. 883; 12 
 L. J., C. P. 179 
 
 Web. P. 0. 404 (n.) 
 
 25L. J., Exch. 241 
 
 1 H. & N. 189 ; 2 Jur., N. S. 645 ; 26 
 L. J., Exch. 9 
 
 2 Coop. 58 
 
 1 Web. P. C. 122 ; 1 Carp. P. C. 524 ; 
 
 1 Lon. Jour., C. S. 215 
 
 6 H. & N. 697 ; 7 Jur., N. S. 978 ; 30 
 L. J., Exch. 365 ; 9 W. E. 696 ; 4 
 L. T., N. S. 411 
 
 IWeb. P. 0. 577 
 
 9 Moo. P. C. C. 41 
 
 Grifif. 265 
 
 Griff. 313 
 
 2 Griff. 33- 
 
 L. E., 1 C. P. 624 ; 12 Jur., N. S. 766 ; 
 35 L. J., C. P. 268; 14 W. E. 769 
 
 IWeb. P. C. 145 
 
 4 0. E. 23, 289 
 
 5 0. E. 641 
 
 1 My. & Or. 373 ; 2 Web. P. 0. 39 . . 
 1 Keen, 190 
 
 5 Bing. N. C. 492 ; 7 Scott, 548 ; 2 
 Am. 78 ; 8 L. J., C. P. 261 ; 2 Web. 
 P. C. 71 
 
 8 01. & Fin. 245 ; West, 682 ; 5 Jur. 
 1028 ; 2 Web. P. C. 79 
 
 1 Web. P. 0. 568 ; 3 Moo. P. C. C. 24 
 
 45 Oh. D. 256; W. N. 1890, 134; 7 
 
 O. E. 343 
 38 L. T. Eep., N. S. 878; 26 W. E. 
 
 780 
 
 Page in Digest 
 where cited. 
 
 245(b); 301 
 (z);309(fe); 
 314 (6) 
 
 440 (r) 
 
 295 (n) ; 326 
 (a) 
 
 213 (a) 
 
 367 (e) 
 
 1(6); 156 (t); 
 262(e); 512 
 
 30 (w); 319 
 (w) 
 
 109(6); 117 
 0'); 120(d) 
 
 141 (x) 
 271 id) 
 13(2/) 
 52 (x) 
 472(f)); 
 (P) 
 185 (») ; 
 
 537 
 
 540 
 
 392 (z) 
 
 200 (/c*); 259 
 (_w) ; 454 
 (m) 
 
 290 (/) ; 336 
 (i); 481 (j>) 
 
 290 (g) 
 
 230(2/); 53a 
 0') 
 
 523 (p); 532 
 
 (i) 
 
 105(/); 120 
 (fj); 130(f); 
 133 (e) 
 
 485 (e') 
 208 (0) 
 
XXXVIU 
 
 Table of Cases. 
 
 iTame of Case. 
 
 Kernot v. Potter 
 
 .1861 
 .1862 
 
 King V. Oliver 
 
 King, Brown & Co. 1). 
 Anglo- American Brush 
 
 Knight's Application 
 
 Knowles v. Bovijl . . 1870 
 
 KoUman's Patent, In re . . 
 1839 
 
 Kurtz V. Spence 
 
 (0. A.) 
 
 Kynoch v. The National 
 
 Aims Company, Limited 
 
 (U. A.) 1877 
 
 Lake's Application 
 
 Beference. 
 
 • Patent 
 
 Lamb v. Nottingham Manu- 
 facturing Company 1874 
 
 Lamenaude's Patent . . 1850 
 
 Lancaster's Patent . . 1864 
 
 1885 
 
 Lang V. Gisborne . . 1862 
 
 V. Whitecross Com- 
 pany (C. A.) 
 Law V. Ashworth . . 1890 
 
 Lawes B. Purser J ..1856 
 
 Lawrence v. Perry . . 
 Lawrie v. Baker 
 
 Lea V. Saxby (Exch.) 1875 
 
 Leadbeater v. Kitohin 
 
 (C. A.) 1890 
 
 Page in Digest 
 where cited. 
 
 SOBeav. 343 
 
 3 De G., F. & J. 447 
 
 10. K. 23,42 
 
 6 0. E. 414 
 
 2 Griff. 35 
 
 22 L. T. Eep., N. S. 70 
 
 IWeb. P. C. 564 
 
 33 Ch. D. 579 ; 3 T. L. E. 827 ; Griff. 
 141 ; 55 L. J., Ch. 919 ; 57 L. J., 
 Ch. 238 ; 55 L. T. 317 ; 35 W. E. 
 26; 30. E. 368; 5 0. E. 161; 58 
 L. T. 438 
 
 36 Ch. D. 770; 4 0. E. 427 ; 36 W. E. 
 
 438 
 
 37 L. T. Eep., N. S. 31 ; 26 W. E. 22. 
 
 Made obsolete by Patents Act, 
 1883, sect. 38 
 
 2 Griff. 35 
 
 6 0. E. 548 
 
 5 0. E. 415 
 
 2 Griff. 16 
 
 Seton on Deo. ed. 4, p. 349 
 
 2 Web. P. C. 164 .. .. •■ .. 
 
 2 Moo. P. C. C, N. S. 189 .. .. 
 Griff. 294 
 
 31 Beav. 133; 8 Jur., N. S. 736; 31 
 L. J., Ch. 769 ; 10 W. E. 638 ; 6 
 L. T. Eep., N. S. 771 
 
 6T. L. E. 57; 6 0. E. 570 .. .. 
 
 7 0. E. 86 
 
 6 B. & B. 930 ; 26 L. J., Q. B. 25 ; 3 
 Jur., N. S. 182; 28 L. T. Bep. 84; 
 5 W. E. 43 
 
 Griff. 143; 2 O. E. 179 
 
 2 0.E. 213 
 
 32 L. T. Eep., N. S. 731 
 
 7 0. E. 235 
 
 69 («•) 
 369 (m*) 
 209 (p) 
 260(a); 420 
 0') 
 58(c) 
 215 (?) 
 108 dy) 
 
 278(c); 460 
 (/); 552(2/) 
 
 552 (J/) 
 379 
 
 61 («) 
 
 53(d) 
 
 46 (/c) 
 
 18 («); 28 (0 
 
 297 (g') 
 
 78; 145 (fc): 
 246 (0 
 
 138 ((J) 
 
 48 (ti) 
 
 250 (a) 
 
 22 (t) 
 
 293 (s); 306 
 (</): 556 (A) 
 
 89(A) 
 
 
 258 (p) 
 
 577 
 
 148 (o); 
 (") 
 
 198 
 
 321 (g) 
 
 
 485 (d); 
 (») 
 
 540 
 
Table of Cases. 
 
 xxxix 
 
 Kanie of Case. 
 
 Leaf u. Topham.. ..1845 
 
 Ledgard v. Bull 
 
 Xjedsam V. BusBell .. 
 
 (Ex. Oh.) 1847 
 
 V. 
 
 (H. L.) 1848 
 
 Lee u. Walker .. ..1872 
 
 Lee's Patent, In re . . 1856 
 
 Lewin v. Brown . . . . 1866 
 
 Lewis V. Davis 
 
 (N. P.) 1829 
 
 V. Marling 
 
 (N. P.) 1829 
 
 V. 
 
 (E. B.) 1829 
 
 Liardet v. Hammond Elec- 
 tric Light Company 
 
 ». Johnson 
 
 (N. P.) 1778 
 Lister v. Eastwood . . 
 
 (Q. B.) 1855 
 
 — — — V. 
 
 (V.-C.) 1855 
 
 (C. P.) 1864 
 
 ■ V. Leather 
 
 (V.-C.) 1857 
 
 ■ V. 
 
 (Q. B.) 1857 
 
 (Ex. Ch.) 1858 
 
 (V.-C.) 1858 
 
 • V. Norton 
 
 (O.A.) 1884 
 
 L'Oiseau and Pierard's Ap- 
 plication 
 
 London and Leicester Ho- 
 siery Company o. Gris- 
 wold 
 
 V. Higham 
 
 Reference. 
 
 14 M. Sc W. 146 ; 14 L. J., Exch. 231 
 
 11 App. Cas. 648 
 
 16L. J., Ex. 145 
 
 IH. L. Cas. 687 
 
 41 L. J., C. P. 91 ; L. E., 7 C. P. 121 ; 
 
 26 L. T. Rep., N. S. 70 
 
 10 Moo. P. C. C. 226 ■.. 
 
 14W. B. 640 
 
 3 C. & P. 502 ; 1 Web. P. C. 488 ; 1 
 Carp. P. C. 471 
 
 4 C. & P. 52 ; 1 Web. P. C. 490 ; 1 
 Carp. P. C. 475 
 
 10 B. & C. 22 ; 4 C. & P. 56 ; 5 M. & 
 E. 66; 1 Web. P. 0. 493; 1 Carp. 
 P. C. 478 
 
 W.N. 1883, 96; 31 W. E. 710 
 
 Bull. N. P. 78; 1 Web. P. C. 53; 1 
 Carp. P. C. 35 
 
 3 0. L. Eep. 1249 
 
 26L. T. Eep. 4 
 
 9 L. T. Eep., N. S. 766 ... 
 
 3 Jur., N. S. 433 
 
 8 E. & B. 1004; 3 Jur., N. S. 811 ; 5 
 W. E. 603 ; 29 L. T. Eep. 142 
 
 8 E. & B. 1031 ; 27 L. J., Q. B. 295 ; 
 4 Jur., N. S. 947 
 
 4K. &J. 425 
 
 1 O. E. 114 ; 2 O. E. 68, 135 ; 3 O. E. 
 199; Griff. 148 
 
 2 Griff. 36 
 
 2 T. L. R. 676; 3 0. E. 251; Griff. 
 154 
 
 Lawson's Patents, pp. 75, 330 ,. 
 
 Page in Digest 
 wliere cited. 
 
 315 (c) 
 298 (m) 
 133 (/) 
 
 105 (?) 
 
 7 0') 
 
 114 (c) 
 
 69(0 
 
 361 (z); 501 
 (6); 572(6) 
 
 1(a); 232 (/) 
 
 229 (a); 273 
 («);439(^); 
 456(0; 481 
 (0; 572(a); 
 578 («!) 
 
 71 (z); 291 
 (m) 
 
 223 (z); 436 
 (S) 
 331 (2) 
 
 341 (3) 
 
 176 (0 
 
 24 (s) 
 
 159 (z): 448 
 (x); 520(6) 
 
 16 (^); 175 
 (o);448(a;); 
 503 (fe) 
 
 384 (2) 
 
 258 (r); 323 
 (0;344(w); 
 389(/0;414 
 W; 531 (gr) 
 
 48(a); 63(3!) 
 
 71(a) 
 
 312 (s) 
 
Table of Gases. 
 
 Name of Case. 
 
 Page in Digest 
 where cited. 
 
 Longbottom v. SUaw 
 
 ■ V. ■ 
 
 ■ V. ■ 
 
 .(O.A.) 
 
 Lorrain's Patent 
 
 Losh V. Hague (V.-O.) 1837 
 
 V. (N. P.) 1838 
 
 5 0. K. 497; 37 W. K. 792 .. .. 
 
 6 0. E. 143 
 
 61 L. T. 325 ; 43 Ch. D. 46 ; 58 L. J., 
 Ch. 734 ; 6 0. E. 510 
 
 5 0.E. 142 
 
 1 Web. P. C. 200; 2 Coup. 59 (n.).. 
 
 1 Web. P. C. 202 
 
 (Escb.) 1838 
 
 1 Web. P. C. 203 (n.) 
 
 (Exch.) 1839 
 
 Lett's Application . . 1853 
 
 Lovell V. Hicks 
 
 (Ex. Eq.) 1836 
 
 V. .. ..1837 
 
 Lowe's Patent, In re . . 1846 
 
 , In re . . 1852 
 
 , In re . . 1856 
 
 Lucas V. Miller . . 
 
 Lucas's Patent . , 
 Luke's Patent . 
 Lukie V. Eobson 
 
 Lynda's Patent . 
 
 ..1854 
 ..1837 
 
 7D.P.C.495; 5M.&W.387; 3 Jur. 
 409 ; 8 L. J., Ex. 251 
 
 John, 168 
 
 5 L. J., Ex, Eq. 101 ; 2 Y. & C. 46 
 
 2 Y. & C. 481 ; 6 L. J., Ex. Eq. 85 
 
 10 Jur. 363 
 
 8Moo. P. C. 0.1 
 
 25 L. J., Oh. 454 ; 4 W. E. 429 . . 
 Griff. 156; 2 0. E. 155 
 
 Macr. P. C. 235 
 Griff. 294 .. 
 
 M' Alpine v. Mangnall 
 
 (Ex. Cb.) 1846 
 
 M'Cormick v. Gray . . 1861 
 
 M'Dougal's Patent, In re.. 
 1867 
 
 McDougall V. Partington 
 1890 
 
 MacEvoy's Patent . . . . 
 Maofarlane v. Price . . 
 
 (N. P.) 1816 
 
 Macfarlane's Applic. 1883 
 
 M'Innes' Patent, In re . . 
 1868 
 
 Macintosh v. Everiugton.. 
 
 9 Eep. Arts, N. S. 55 ; 2 Carp. P. 0. 
 413 ; 2 Jul-. 201 
 
 5 0. E. 663 
 
 3 0. B. 496 ; 15 L. J., C. P. 298 
 
 7 H. & N. 25 ; 31 L. J., Ex. 42 ; 9 
 W. E. 809 ; 4 L. T. Eep., N. S. 832 
 
 L. E., 2 P. C. 1 ; 37 L. J., P. G. 17 ; 
 
 5 Moo. P. C. C, N. S. 1 
 
 7 0. E. 216, 351 
 
 5 0. E. 285 
 
 1 Stark. 199 ; 1 Web. P. C. 74 (n.) .. 
 
 John, 168 
 
 L. E., 2 P. C. 54 ; 37 L. J., P. C. 23 ; 
 
 5 Moo. P. 0. 0., N. S. 72 
 
 6 Eep. Alts, N. S. 317, 365 ., .. 
 
 317 (ft*); 393 
 (e) 
 
 539 (a;) 
 318 (g) 
 
 50(0 
 
 345 (6); 346 
 (ft) 
 
 265 (g); 274 
 (9); 522(0); 
 532 (t); 576 
 (8) 
 
 300 (0 
 
 383 (0 
 
 43(6) 
 67 (i) 
 
 206 Qi) 
 121 (70 
 107 (2) 
 
 55 0') 
 
 414 (m); 418 
 (a!); 484(2/) 
 
 16(o);23(p) 
 45(/*) 
 336 (0 
 
 51 (r) 
 
 67 0'): 73 
 0');448(«); 
 463 (6) 
 
 176 (s); 203 
 (») ; 231 (c) 
 
 112 (r) ; 118 
 (s); 132(b) 
 293 (s') 
 
 49(d) 
 446 (o) 
 
 43(/) 
 132 (d) 
 
 522 (m) 
 
Table of Oases. 
 
 xli 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 ■where cited. 
 
 Macintosh's Patent 1836-7 
 
 , In re 
 
 • 1856 
 
 M'Kean's Patent, In re . . 
 1859 
 
 Maokeloan v. Eennie 1862 
 
 Mackie v. Berry 
 
 Macmillan, Ex parte Wliit- 
 tater, In re (Bank.) 1871 
 
 Macnamara v. Hulse . . 
 
 (N. P.) 1842 
 
 Main's Application . . 
 Mallet's Patent, In re 1866 
 
 Mauceaux, Ex parte . . 1870 
 
 , Ex parte . . 1870 
 
 Mangnall ■». Benecke 
 
 Manton v. Manton . . 
 
 (N. P.) 1815 
 
 D.Parker ..1814 
 
 Markwick's Patent, In re . . 
 1860 
 
 Maraden v. The Saville 
 Street Foundry and En- 
 gineering Co. (Limited) 
 (Pollock, B.) 1878 
 
 (C. A.) 1878 
 
 Marshall's Application . . 
 
 Martin and Hyam's Patent 
 1855 
 
 Martin's Patent 
 
 Mason v. Goodwin . . 
 
 Mathers v. Green 
 
 (M. E.) 1865 
 
 (L. 0.) 1865 
 Matthey's Patent . . (Eliz.) 
 
 1 Web. P. C. 739 
 
 2 Jur., N. S. 1242 ; 5 W. E. 194 ; 28 
 L. T. Eep. 280 
 
 1 DeG., F. & J. 2; 8 W.E. 1 ; 1 L. T. 
 
 Eep., N. S. 19 
 
 13 C. B., N. S. 52 
 
 2 0.E. 146 
 
 24 L. T. Eep., N. S. 143 
 
 Car. & M. 471 ; 2 Web. P. C. 128 (n.) 
 
 7 0. E. 13 
 
 L. E., 1 P. C. 308; 4 Moo. P. C. C, 
 
 N. S. 175 
 L. E., 5 Ch. 518 ; 18 W. E. 854 . . 
 L. E., 6 Ch. 272 ; 18 W. E. 1184 . . 
 See Bridson v. Benecke. 
 Dav. P. C. 333; 1 Carp. P. C. 278.. 
 
 Dav. P. C. 327 ; 1 Web. P. C. 192 (n.) 
 8 W. E. 833 ; 13 Moo. P. C. 0. 310 
 
 39 L. T. Eep., N. S. 97 
 
 L. E., 8 Exch. D. 203 ; 39 L. T. Eep., 
 N. S. 100 ; 26 W. E. 784 
 
 5 0. E. 661 
 
 3W. E. 433 
 
 Griff. 320 
 
 6 0.E. 235 
 
 84 L. J., Ch. 298 ; 13 W. E, 421 ; 12 
 
 L. T. Eep., N. S. 66 ; 5 N. E. 858 ; 
 
 34 Beav. 170 
 35 L. J., Ch. 1; 11 Jur., N. S. 845; 
 
 14 W. E. 17; 13 L. T. Eep., N. S. 
 
 420 ; L. E., 1 Ch. 29 
 
 Noy, 178; 1 Web. P. C. 6 .. .. 
 
 105(d); 140 
 
 59 (It) 
 
 41 («); 57 
 (v); 860(0 
 
 412 (o); 443 
 (d); 470(g); 
 528 («) 
 
 198 (6) 
 
 208 (m) 
 
 156 (m); 203 
 (z);301(x); 
 428(7ii);442 
 (y);462(r): 
 580 (g) 
 
 64(0) 
 
 138 (e) 
 
 57(2/) 
 
 47 (8); 55 (I) 
 
 340 (a) 
 
 224 (c) ; 361 
 (c);423(r); 
 446(»); 572 
 («) 
 
 572 (m) 
 
 111 (»); 122 
 (m); 138 (c) 
 
 277 (6) 
 
 277 (6) 
 
 46(0 
 526 («) 
 
 544 (i) 
 156 (s> 
 208 (m) 
 
 208 (m); 370 
 (?) 
 
 144(e); 222 
 («) 
 
xlii 
 
 Table of Gases. 
 
 Name of Case. 
 
 Page in Digt'at 
 where cited. 
 
 Mayer®. Frith .. ..I860 
 
 1;. Spence ..I860 
 
 Meadows v. Kirkman 1860 
 
 Medlock's Patent . . 1865 
 Meyer v. Sherwood . . 
 
 (C. A.) 1890 
 Milligan v. Marsh . . 1856 
 Milner's Patent, In re 1854 
 
 Minter r. Mower 
 
 (N. P.) 1835 
 
 V. 
 
 (K. B.) 1837 
 
 - V. Wells . 
 
 (N. P.) 1834 
 
 (Exch.) 1834 
 ■«. ■Williams ..1835 
 
 Mitchell V. Barker . . 1851 
 
 . II. Eeynolds 1713 
 
 Mitchell's Patent ..1867 
 
 Monopolies, Case of . . 
 
 Moore v. Bennett 
 
 (H. L.) 1884 
 
 Morewood v. Tupper . . 1855 
 
 Morey's Patent, In re 1858 
 
 Morgan v. Fuller . . 1866 
 
 ■ V. Seaward . . 
 
 (V.-C.) 1835 
 
 (N. P.) 1836 
 
 (Exch.) 1837 
 
 2 L. T. Eep., N. S. 536 
 
 IJ. &H. 87 
 
 29 L. J., Exoh. 205 
 
 22 Newt. Lond. Jour., N. S. 69 .. 
 7 0. E. 283 
 
 2 Jur., N. S. 1083 
 
 9 Moo. P. C. C. 39 
 
 IWeb. P. C. 138 
 
 6A.&E.735; 1 N. &P. 595; W. W. 
 & D. 262; 1 Wtb. P. C. 142; 6 
 L. J., K. B. 183 
 
 1 Web. P. C. 127 ; 1 Carp. P. C. 622 
 
 5 Tyr. 163 ; 1 C. M. & E. 505 ; 1 Web. 
 P. 0. 134 ; 1 Carp. P. C. 639 ; 4 
 L. J., Ex. 2 
 
 4 Ad. & BU. 251 ; 1 Web. P. C. 135 ; 
 
 5 Nev. & M. 647 ; 1 H. & W. 585 ; 
 
 5 L. J., K. B. 60 
 
 39 Lond. Jour. 531 
 
 1 P. Wms. 181 ; 10 Mod. 130 
 
 L. E., 2Ch. 343 
 
 See Darcy v. Allin. 
 
 Griff. 158; 1 O. E. 129 
 
 3 0. L. Eep. 718 
 
 25 Beav. 581 ; 6 W. B. 612 
 
 L. E., 2 Eq. 296, 297 ; 14 L. T. Eep., 
 N. S. 353 ; 14 W. E. 497 
 
 IWeb. P. 0. 167 
 
 1 Web. P. C. 170 ; 2 Carp. P. C. 37 
 
 2 M. & W. 544 ; Mur. & H. 55 ; 1 Jur. 
 527; 1 Web. P. C. 187; 2 Carp. 
 P. C. 96; 6L. J., Ex. 153 
 
 (Exch.) 1838 
 Morgan's Patent, In re 
 
 1843 
 
 2 Carp. P. 0. 104 
 1 Web. P. C. 737 
 
 351 (i) 
 360 (w) 
 326 (6); 360 
 («) 
 
 19(«);270') 
 22 0') 
 
 278 (e) 
 
 141 (w) 
 
 233 '(3); 461 
 (m) 
 
 456 (m) 
 
 73 (/); 184 
 (s): 274(0); 
 363 (ft); 364 
 (g); 573(c) 
 
 461 (h); 494 
 163 (&) 
 
 368 («) 
 492 (a) 
 41(3) 
 492 (y) 
 197 (z); 390 
 (I); 452 O') 
 174 (h) 
 399 (x) 
 
 303 (j); 355 
 (») 
 
 325 (u); 336 
 
 (0 
 185(m); 425 
 
 (fc);440(t); 
 
 486(4); 576 
 
 (r) 
 
 234 (i); 244 
 (0; 265 (p) 
 495(3); 563 
 («); 573(e); 
 578 (t/) 
 
 15 0') 
 100(3); 109 
 
Table of Cases. 
 
 xliii 
 
 Name of Case. 
 
 Reference. 
 
 24 W. E. 245 ; W. N. 1876, 27 .. 
 
 W. N. 1888, 34; 58 L. T. 713; 5 
 O. E. 186 
 
 2 Griff. 16 
 
 3 0.E. 212 
 
 W. N. 1887, 143 ; 3 T. L. E. 748 ; 4 
 O. E. 417 
 
 W. N. 1888, 80 ; 5 0. E. 295 ; 4 
 T. L. E. 425 
 
 7 0. E. 131 
 
 Bull, N. P. 76 ; 1 Web. P. C. 51 ; 1 
 Carp. P. 0. 30 
 
 1 Or. S., 3rd Series, 718 
 
 55 L. T. 482 ; 3 O. E. 351 ; 4 0. E. 
 241 ; Griff. 163 
 
 33 Ch. D. 603 ; 35 W. E. 165 ; 3 0. E. 
 
 373 ; 2 T. L. E. 839 ; 56 L. J., Ch. 
 
 126 
 L. E., 4 Ch. 292; 20 L. T., N.S. 961 
 3C. &K.297 
 
 2 Web. P. C. 93 
 
 2Web. P. C. 96 
 
 2 Web. P. C. 93 (d.) 
 
 7 Jur. 121 ; 2 Coop. 61 (n.) .. .. 
 2Web. P. C. 87 
 
 2Web. P. C. 113 
 
 L. E., 7 Ch. 570 ; 20 W. B. 649 ; 27 
 L. T. Eep., N. S. 110 
 
 21 W. E. 118 ; 42 L. J., Ch. 191 ; L. E. 
 15 Eq. 115; 27 L. T. Eep., N. S. 644 
 
 Page in Digest 
 where cited. 
 
 Morgan's Patent, In re 
 
 (M. E.) 1876 
 ..1888 
 
 ..1886 
 
 Morgan Brown's Patent 
 ■». Windover.. 
 
 -(C.A.) 
 ■ (H. L.) 
 
 Morris v. Branson . : 
 
 (N. P.) 1776 
 
 Morton v. Middleton . ; 1863 
 
 Moseley v. Victoria Eubber 
 Company 
 
 Moss V. Malings 
 
 Moxon ». Bright ..1869 
 
 MulUns V. Hart 
 
 (N. P.) 1852 
 
 Muntz V. Foster 
 
 (L. C.) 1843 
 
 (N. P.) 1844 
 
 (C. P.) 1844 
 ■ V. Greenfell ..1842 
 
 • ». Yivian and 
 
 Walker 
 Muntz's Patent, In re 1846 
 
 Murray v. Clajtou . . 
 
 (L. J.) 1872 
 
 (V.-O.) 1872 
 
 400 (a) 
 
 403 (ft) 
 
 30(«) 
 142 
 241 (z) 
 
 228 (0; 241 
 (^) 
 228 (t); 539 
 
 518 (w) 
 
 429 (s); 448 
 
 (y); 486 (fc); 
 
 499 '(s); 504 
 
 0')' 
 259 (0; 323 
 
 (m); 419 
 
 (3); 435(d); 
 
 509 (i«) 
 305 (s); cited 
 
 522 (A;) 
 
 371 («) 
 266 (a) 
 
 245 (o) ; 338 
 (0 
 
 94 (z); 154 
 (/); 157 
 (w) ; 163 
 (m); 186(2); 
 230(a); 245 
 (p);267(z); 
 275 (ti); 462 
 (i);487(i)); 
 365 (lo); 523 
 (r) ; 428 (0 
 
 353 (m) 
 
 338 (s) 
 172 (e) 
 
 114 (a*); 122 
 (j); 141(0 
 
 192 (o); 226 
 (to); 505 (n) 
 
 321 (/) ; 361 
 
xliv 
 
 Table of Oases. 
 
 Name of Case. 
 
 Murray v. Clayton . . 
 
 (V.-C.) 1872 
 
 Musgrave v. Hicks .. 
 
 Myers's Patent, In re 
 
 Napier's Patent, In re 1861 
 
 ; .. ..1881 
 
 Needham v. Johnson (0. A.) 
 
 ■ V. Oxley . . 
 
 (V.-U.) 1863 
 
 (V.-C.) 1863 
 
 (V.-C.) 1863 
 
 (V.-C.) 1865 
 Neilson «. Betts 
 
 ■ V. Forman ..1841 
 
 • V. Fothergill 
 
 (L. ) 1841 
 
 - V. Harford . . 
 
 (N. P.) 1841 
 
 ■V. ..1841 
 
 (Exoh.) 1841 
 
 (L. C.) 1841 
 
 V. Thompson 
 
 (L. C.) 1841 
 
 Newall V. Elliott . . .". 
 (Exch.) 1863 
 
 (Exoh.) 1864 
 
 Reference. 
 
 21 W. K. 498 ; L. E. 10 Ch. 675 (n.) 
 
 3 0. K. 49 
 
 W. N. 1882, 53, 56 
 
 13 Moo. P. C. C. 543 ; 9 W. K. 390 
 
 6 App. 0. 174 ; 50 L. J., P. C. 40 ; 
 
 29 W. R. 743 
 Griff. 168; 1 0.11.49 
 
 8 L. T. Eep., N. S. 532 ; 11 W. R. 745 ; 
 9 Jm-., 2sr. S. 598 ; 2 N. E. 232, 267 
 
 8 L. T. Rep., N. S. 604 ; 2 N. R. 388 ; 
 11 W. R. 852 
 
 IH. &M. 248 
 
 21 Newt. Lend. Jour., N. S. 300 .. 
 See Betts v. Neilson (H. L.) .. 
 
 See Neilson v. Thompson 
 
 IWeb. P. C. 287 
 
 IWeb. P. C. 295 
 
 1 Web. P. C. 324 (a.) 
 
 8 M. & W. 806 ; 1 Web. P. C. 331 ; 
 11 L. J., Ex. 20 ; 10 L. J., Ex. 493 
 
 1 Web. P. C. 373 ; 2 Coop. C. C. 61 (n.) 
 
 1 Web. P. C. 278; 2 Coop. 61 (n.) .. 
 
 1 H. & C. 797 ; 9 Jur., N. S. 359 ; 32 
 L. J., Exoh. 120; 11 W. E. 438; 
 7 L. T. Rep., N. S. 753 
 
 10 Jur., N. S. 9.54; 13 W. E. 11 ; 10 
 L. T. Eep., N. S. 792 ; 4 N. R. 429 
 
 Page in Digest 
 where cited. 
 
 352 (/) 
 
 199 (g) 
 400 (6) 
 
 102 (r); 111 
 
 («) 
 119 (w); 139 
 
 (fe) 
 
 197 (x); 478 
 (K) 
 
 354 (r) 
 
 356 (c) 
 
 296 (o) 
 
 192 (m) 
 
 328(9); 345 
 (^); 366(6); 
 375 (n) ; 472 
 
 337 (r) 
 87(c) 
 
 185 (x); 426 
 (/); 577(0 
 
 314 («) 
 
 8 ip) ; 301 
 («);441(a!); 
 461 (p); 481 
 (m);495(?0; 
 541 (a); 567 
 
 (/) 
 337 (n) 
 
 186 (k); 427 
 (3) 
 
 90(») 
 
 159(6); 208 
 («,•) ; 406, 
 412 (p); 449 
 (2);517(r); 
 565 dy) 
 
Table of Cases. 
 
 xlv 
 
 Name of CaPO. 
 
 Reference. 
 
 4 0. B., N. S. 269 ; 4 Jur., N. S. 562 ; 
 27 L. J., C. P. 337 
 
 17L. T. Kep. 20 
 
 2 De G., M. & G. 282 ; 19 L. T. Eep. 
 161 
 
 2 Mer. 446 ; 1 Carp. P. C. 367 
 
 5 0. K. 271; 2 Griff. 40 
 
 5 0. E. 279 
 
 7 0. B. 307 .. .. 
 
 5 Exoh. 331 ; 20 L. J., Esoh. 427 (n.) ; 
 M. Dig. 75 
 
 John, 152 
 
 6 Exch. 859 ; 21 L. J., Ex. 305 .. 
 
 14 Moo. P. C. C. 156 
 
 15 Moo. P. C. C. 176; 10 W. E. 731 ; 
 9 Jiir., N. S. 109 
 
 9 App. C. 592; 1 0. E. 177 .. .. 
 
 8 Scott, N. E. 97; 7 M. & G. 378 ; 8 
 Jur. 474 ; 13 1. J., C. P. 146 
 
 8C. B. 679 
 
 4 Beav. 563 ; 1 Web. P. C. 650 .. 
 
 IPh. 36; 1 Web. P.O. 656 .. .. 
 
 17 Ch. D. 721 ; 50 L. J. Ch. 582 ; 48 
 L. T. 490 ; 30 W. E. 294 
 
 8 App. Gas. 5 ; 52 L. J. Ch. 339 ; 
 31 W. E. 388 
 
 7 Moo. P. C. C. 191 
 
 2 Griff. 18 
 
 Griff. 175; 1 O. E. 10,61 .. .. 
 
 L. B., 3 P. C. 193 ; 6 Moo. P. C. C, 
 
 N. S. 477 
 
 9 Moo. P. C. 0.452 .. 
 
 1 Moo. P. C. C, N. S. 339 ; 9 Jur., 
 N. S. 419 ; 11 W. E. 720 ; 1 N. B. 
 557 
 
 7 H. & N. 499 ; 8 Jur., N. S. 155 ; 10 
 W. E. Ill 
 
 Page In Digest 
 where cited. 
 
 Newall and Elliott, In re ,. 
 1858 
 
 V. Wilkins 
 
 (N. P.) 1851 
 
 B. Wilson ..1852 
 
 Newhery v. James . . 1817 
 
 Newman's Patent 
 
 .: (No. 2) ■. . 
 
 Newaum v. Mann . . 1890 
 
 Newton v. Grand Junction 
 EailwayCo 1846 
 
 Newton v. Halbard ..1872 
 
 r V. Vaucher . . 1851 
 
 Newton's Patent, In re 
 
 1861 
 
 1862 
 ..1884 
 
 Nickels v. Haalam . . 1844 
 
 .-«. Boss .. ..1849 
 
 Nickel's Patent, In re 
 
 (M. E.) 1841 
 
 (L. C.) 1841 
 Nobel's Explosive Com. v. 
 Jones, Scott & Co. 
 
 (H. L.) 
 
 Noble's Patent, In re 1850 
 
 Nordenfelt's Patent 
 Nordenfelt v. Gardner . . 
 Normand's Patent . . 1870 
 
 Normandy's Patent ..1855 
 
 Norton's Patent, In re . . 
 ; 1863 
 
 ;^}oton ». Brooks ..1861 
 
 263 (j); 411 
 (») 
 384 (p) 
 
 341 (e); 348 
 (to); 373(6) 
 423 (0 
 52(2/) 
 46 (Jc*) 
 511 (c') 
 
 172(/); 204 
 (a); 225(A) 
 
 472 (»*) 
 
 173 (i); 226 
 
 (i); 467 (c); 
 
 498 (o); 561 
 
 («) 
 7(«); 102 (s); 
 
 123 (m) 
 
 133 
 113(d); 140 
 
 (0) 
 
 567 (g) 
 
 144 (/i); 276 
 (a;); 363 (m) 
 
 29(j-) 
 
 29(r);57(M) 
 162 (70 
 162 (7t) 
 101 (»); 106 
 
 (0) 
 
 18(D) 
 
 198 (a) 
 
 103 («) ; 133 
 
 137 (6) 
 
 103 (w); 112^ 
 (2); 129(g) 
 
 90 (Z) 
 
xlvi 
 
 Table of Cases. 
 
 Name of Case. 
 
 Nimn V. D' Albuquerque . . 
 1865 
 
 Nussey and LeaclHnan.'s 
 Patent 1889 
 
 Oddy V. Smith 
 
 Oldham o. Langmead 
 
 Before 1789 
 
 Ormson ». Clarke 
 
 (0. P.) 1862 
 
 (Ex. Ch.) 1863 
 
 Osborne v. Julllon . . 1856 
 Osmond v. Hirst . . 1 885 
 Otto ». Singer .. ..1889 
 
 - V. Steel 
 
 - V- Sterne 
 
 (0. A.) 
 
 Oxford and Cambridge Uni- 
 versities V. ElchariJson 
 
 1802 
 
 Oxley ?). Holden ..1860 
 
 Palmer v. Cooper . . 1853 
 ■ '- V. Wagstaffe . . 1853 
 
 V. — ..1854 
 
 Parker v. Maignen's FUtre 
 Eapide Company . . 
 
 Parkes v. Stevens 
 
 (V.-C.) 1869 
 
 Parkes v. Stevens 
 
 (L. 0.) 1869 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 34Beav. 595 
 
 7 0. K. 22 
 
 5 0. K. 503 
 
 370 (s); 387 
 («) 
 127 (i> 
 
 317 (I); 393 
 (e); 539 (») 
 
 32 L. J., C. P. 8 ; 13 C. B., N. S. 337 ; 
 9 Jur., N. S. 749 ; 11 W. E. 118 ; 7 
 L. T. Eep., N. S. 361 ; 1 N. E. 61 
 
 32 L. J., C. P. 291 ; 14 C. B., N. S. 
 475 ; 10 Jur., N. S. 128 ; 11 W. E. 
 787 ; 2 N. E. 192 
 
 26L. J., Ch. 6; 4 W. E. 767 .. .. 
 
 Griff. 179; 2 O. E. 265 
 
 6T. L. E. 52; 7 0. E. 7 
 
 31 Ch. D. 241 ; 55 L. J., Ch. 196 ; 54 
 
 L. T. 157 ; 34 W. E. 289 ; 2 O. E. 
 
 139 
 
 3 0. E. 109 
 
 6 Yes. 689 
 
 8 C. B., N. S. 666 ; 30 L. J., 0. P. 68 ; 
 8 W. E. 626 ; 2 L. T. Eep., N. S. 464 
 
 9 Exch. 231 ; 2 C. L. E. 430 ; 23 
 L. J., Exch. 82 
 
 8 Exch. 840"; 17 Jur. 581 ; 22 L. ,T., 
 Exch. 295; 1 W. E. 438 ; 1 C. L. 
 Eep. 448 
 
 9 Exch. 494; 2 C. L. E. 1052; 23 
 L. J., Exch. 217 
 
 5 0. E. 207 
 
 L. E., 8 Eq. 358 ; 38 L. J., Ch. 627 ; 
 17 W. E. 846 
 
 L. E., 5 Ch. 36; 18 "W. E. 233; 22 
 L. T. Eep., N. S. 635 
 
 534 (0 
 
 534 Qy 
 
 207 (Tc) 
 348 (p) 
 218 (g) 
 
 [258(g); 478 
 
 258(3); 381 
 (c);478(«i) 
 
 334 (c) 
 
 1 (e); 164 
 (p);248(2,); 
 266(«));469 
 (m) ; 568 (I) 
 
 310 (70 
 310 (0 
 
 365 (a;); 468 
 (?) 
 306 (w) 
 
 177 (y); 430 
 («));450(e); 
 637(g); 569 
 W 
 
 m (y); 226 
 
Table of Cases. 
 
 xlvii 
 
 Name of Case, 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 Pamell v. Mort, Liddell & 
 Co. (0. A.) 
 
 Parnell's Patent, In re . . 
 
 Pasoall V. Toope . . 1890 
 
 Patent Bottle Envelope Co. 
 V. Seymer 18S8 
 
 Patent Marine Inventions 
 Co, V. Chadburn . 1873 
 
 Patent Type Founding Co. 
 e. Kichards ..(Ch.) 1859 
 
 V. 
 
 (G. P.) 1860 
 
 V. Walter . . 
 
 . V Lloyd 1860 
 
 V. Walter 
 
 (Ch.) 1860 
 
 Paterson's Patent 
 
 Patterson v. The Gas Light 
 and Coke Company 
 
 (C. A.) 1876 
 V. 
 
 (H. L.) 1877 
 
 Patterson's Patent .-.1849 
 Patteson v. Holland .. 1845 
 
 Payne 1). Banner ..1846 
 Payne's Patent, In re . . 1854 
 
 Penn v. Bibby " 
 
 V. Jack 
 
 V. Fernie 
 
 (V.-C.) 1866^ 
 
 -^v. ) 
 
 V. (V.-O.) 1866/ 
 
 • «.-- \ 
 
 V. . — (L. C.) 1866/ 
 
 ^. \ 
 
 V. (V.-C.) 1866/ 
 
 ». Bibby ) 
 
 1). Jack (V.-O.) 1867/ 
 
 Pennyopbk Patent Glazing 
 Comp, V. Mackenzie 1882 
 
 Pering, Ex parte . . 1836 
 
 Perkins's Patent, In re . . 
 1845 
 
 29Ch.D.325; 10.R.4; 2 0. E. 55; 
 33 W. K. 481 
 
 4T. L. E. 197; 5 0. E. 126 .. .. 
 
 7 0. E. 125 
 
 5 0. B., N. S. 164 ; 5 Jur., N. S. 174 ; 
 28 L. J., 0. P. 22 
 
 L. E., 16 Eq. 447 ; 21 W. E. 745 ; 28 
 L. T. Eep., N. S. 614 
 
 1 John. Eep. 381 ; 6 Jur., N. S. 89.. 
 
 2 L. T. Eep., N. S. 359 
 
 (5 H. & N. 192; ^9 L. J., Exch.207; 
 6 Jur., N. S. 103 ; 1 L. T. Eep., 
 
 I N. S. a82 
 
 Johns. 727; 8 W. E. 353 
 
 Griff. 295 
 
 L. E., 2 Ch. D. 812, 827 ; 45 L. J., Ch. 
 843; 35 L. T. Eep., N. S. 11 
 
 L. E., 3 App. Cas. 239 ; 47 L. J., Oh. 
 402 ; 38 L. T. Eep., N. S. 303 ; 26 
 W. E. 482 
 
 6 Moo. P. 0. 0. 469 ; 13 Jur. 593 .. 
 Cit. Hind, on Pat., p. 293 . . . . 
 
 15 L. J., Ch. 227 
 
 Oit. Coryton's Law of Letters Pat., 
 220 
 
 L. E., 3 Eq. 308 ; 36 L. J., Ch. 277 ; 
 15 L. T. Eep., N. S. 385 
 
 L. E., lEq. 548 
 
 391 
 
 L. E., 2 Ch. 127 ; 36 L. J., Ch. 455 ; 15 
 W. E. 208 ; 15 L. T. Eep., N. S. 399 
 
 L. E., 2 Eq. 314 ; 14 L. T. Eep., N. S. 
 495 ; 14 W. E. 760 
 
 L. E., 5 Eq. 81 ; 37 L. J., Ch. 136 ; 
 16 W. E. 243; 17 L. T., N. S. 407 
 
 19 Soot. Law Eep. 353 
 
 4 A. &E. 949; 6 N. & M. 472 
 2Web. P. C. 6 
 
 401 
 
 316 (i); 
 
 72 («); 
 
 (6*) 
 306 (a) 
 175 (^); 526 
 
 (»); 568 (ft) 
 
 357 (<7) 
 442 (o) 
 296 (6) 
 
 ^327 (c) 
 I 
 
 31, 327 (c); 
 351 (c) 
 
 45(5r) 
 150 Cy) 
 
 75, 150 (y); 
 254 (j); 276 
 (z); 542 (d) 
 
 129 (») 
 
 354 (o); 378 
 W 
 
 67 (/c) 
 
 111 (/j) 
 
 r343(p); 374 
 0'); 387(6); 
 529 (6); 568 
 (m) 
 
 /304 (I); 387 
 
 378 (ic); 412 
 (r);414(2/); 
 529(6) 
 
 355 (m) 
 
 375 (/«) 
 
 196 (1)1) 
 
 148 (^7) 
 106(?i); 110 
 (3); 121 (?) 
 
xlviii 
 
 Table of Gases. 
 
 Name of Case. 
 
 Page in Digest 
 where cited. 
 
 Peroni v. Hudson . . 1883 
 Perry v. Mitchell . . 1840 
 u. Skinner ..1837 
 
 Petman v. Bull 
 
 Philips V. Ivel Cycle Co. . . 
 1890 
 
 Philpott V. Hanbury . . 
 
 Pickard v. Prescott ..1890 
 
 Pidding v. Franks . . 1849 
 
 Pietschmann's Patent 1884 
 
 Piggott V. Anglo-American 
 Telegraph Company 1868 
 
 Pinkus's Patent, In re 1 848 
 
 Pitman's Patent, In re . . 
 1871 
 
 Pitt's Patent 
 
 Plating Company v. Farqu- 
 harson 1883 
 
 Plimpton V. Maloolmson . . 
 1875 
 
 (M. K.) 1876 
 
 V. Spiller .. 
 
 (0. A.) 1876 
 
 (Field, J.) 1876 
 
 (M; K.) 1877 
 
 (C. A.) 1877 
 
 Podmore v. "Wright . . 
 Poole's Patent, In re 1867 
 
 Pooley V. Pointon 
 
 Porter's Patent, In re 1853 
 
 Post Card Automatic Sup- 
 ply Company v. Samuel 
 
 Potter V. Kernot 
 
 Griff. 184; 1 0. E. 261 
 
 IWeb. P. 0. 269 
 
 2 M. & "W. 471 ; M. & H. 122; 1 Jur. 
 433; 1 Web. P. C. 250; G L. J., 
 Ex. 124 
 
 3 0. E. 390 
 
 62L. T. 392; 7 0. E. 77 
 
 Griff. 185; 2 0. E. 33, 153 .. .. 
 
 7 0. E. 361 
 
 18 L. J., Ch. 295 ; 1 Mac. & G. 56 . . 
 Griff. 314 
 
 19 L. T. Eep., N. S. 46 .. .. .. 
 
 12 Jur. 233 
 
 L. E., 4 P. C. 84 ; 8 Moo. P. C. C, 
 N. S. 293 
 
 5 0. E. 343 
 
 Griff. 187; 17 Ch. D. 49 
 
 44 L. J., Ch. 257 ; L. E., 20 Eq. 87 
 
 L. E., 3 Ch. D. 531; 45 L. J., Ch. 
 505 ; 34 L. T. Eep., N. S. 340 
 
 L. E., 4 Ch. D. 286; 35 L. T. Eep., 
 N. S. 656 ; 25 W. E. 152 
 
 20 Solicitor's Journal, 1876, p. 860 
 
 L. E., 6 Ch. D. 412 
 
 L. E., 6 Ch. D. 425 ; 47 L. J., Ch. 
 2U; 37 L. T. Eep., N. S. 56; 26 
 W. E. 285 
 
 5 0. E. 380 
 
 L. E., 1 P. C. 514; 36 L. J., P. C. 
 
 76; 4 Moo. P. C. C, N. S. 452 
 Griff. 199; 2 O. E. 167 
 
 Coryton's Law of Letters Pat. p. 217 
 
 6 0. E. 560 
 
 See Kernot v. Potter. 
 
 390 (m) 
 295 (x) 
 22(0 
 
 298 (m) 
 292 (r); 318 
 
 («) 
 257 (m) ; 434 
 
 (?');478(i); 
 
 521 (/*); 
 
 574 (m) 
 
 545 (sf) 
 89(/) 
 20(2) 
 328 (/) 
 
 110(A); 128 
 (m); 131 (a) 
 
 103 (w); 104 
 (6);112(«); 
 138 (g) 
 
 32(a) 
 25 (s); 
 
 0-) 
 
 343 (s) 
 
 329 
 
 251(/); 278 
 (/); 430 (a;) 
 
 331 (s); 483 
 («) 
 
 312 dp) 
 
 231 ((2);. 473 
 
 (6) 
 231(d); 253 
 
 (fe);483(») 
 
 241 (a) 
 124 (s) ; 133 
 
 257 (o); 391 
 (3);444(/*) 
 
 134 (A) 
 
 219 (s) 
 
 69 (»■) 
 
Tahle of Gases, 
 
 xlix 
 
 Name of Case. 
 
 Potter V. Parr and others 
 
 Poupard v. Fardell . . 
 
 (V.-C.) 1869 
 ■». . . 
 
 (V.-C.) 1869 
 
 Pow«. Taunton ..1845 
 
 Pow's Patent, In re . . 
 
 Price's Patent Candle Com- 
 pany V. Bauwen's Patent 
 Candle Company 1858 
 
 Printing and Numerical 
 Registering Company v. 
 Sampson (M. E.) 1875 
 
 Procter »;. Bailey ;: 
 c. (0. A.) 
 
 V. Bennis (G. A.) 
 
 V. Sutton Lodge 
 
 Chemical Company 
 
 Protheroe v. May . . 1839 
 PuUan's Patent, In re 
 
 Reference. 
 
 QuarrQl's Patent, In re .. 
 1840 
 
 Eailway and ' Electrical 
 ■' Appliance Company, In re 
 
 Ealston v. Smith 
 
 (C. P.) 1860 
 
 (Ex. Ch.) 1861 
 
 (B. L.). 1865 
 
 Eawes 1). Chance .. .. 
 (C. A.) 1890 
 
 Eead v. Andrew.'s . . 1885 
 
 Eedmund's Patent, In re . . 
 
 1828 
 
 E. ■». Arkwright ..1785 
 
 2 B. & S. 216 (n.) 
 
 18W. E. 59 
 
 18 V. E. 127; 21 L. T. Eep., N. S. 
 696 
 
 9Jur. 1056 
 
 See Eobinson's Patent, In re. 
 
 4K. &J.727 
 
 L.E., 19 Eq. 462 ; 44 L. J., Ch. 705; 
 32 L. T. Eep., N. S. 354 
 
 6 0. E. 106 ; 38 W. E. 100 .. .. 
 
 6 O. E. 538 ; 59 L. J. Ch. 12 ; 42 
 Ch. D. 390 
 
 36 Ch. D. 740; 4 O. E. 333; 3 T. 
 L. E. 820; 57 L. J. Ch. 11; 57 
 L. T. 622; 36 W. E. 456 
 
 5 0. E. 184 
 
 5 M. & W. 675 ; 1 Web. P. C. 414 ; 
 9 li. J., Ex. 121 
 
 Not reported. See Johnson's P. M., 
 4th ed., p. 103 
 
 1 Web. P. C. 740 
 
 Page in Digest 
 where cited. 
 
 38 Ch. D. 597 ; 59 L. T. 22 ; 36 W. 
 E. 730 
 
 9 C. B., N. S. 117: 4 L. T. Eep., 
 N. S. 549 
 
 11 C. B., N. S. 471 ; 8 Jur., N. S. 
 
 100 ; 31 L. J., C. P. 102; 10 W. E. 
 
 107 
 11 H. L. Cas. 223 ; 20 C. B., N. S. 
 
 28; 13 L. T. Eep., N. S. 1; 35 
 
 L. J., C. P. 49 
 
 7 0.E.275 
 
 Griff. 201; 2 0. E. 119 
 
 5 Euss. 44 ; 1 Web. P. C. 649 (n.) .. 
 
 Dav. P. C. 61; Printed Cases, Fol. 
 Lon. 1785; 1 Web. P. C. 64; 1 
 Carp. P. C. 53 
 
 504 (i) 
 243 (g) 
 
 487 (») 
 
 524 (s); 574 
 
 130 («) 
 
 349 (w); 369 
 (m) 
 
 70(») 
 
 346 (g) 
 346(g); 377 
 
 (0 
 92 (w); 199 
 
 (e);453(m) 
 
 392 (j/) 
 211 (0 
 25(</) 
 
 120 (c) 
 
 12 id) 
 17 (r) 
 17 (r) 
 
 17 (r); 444 
 (/);470(8); 
 499(0; 520 
 (c); 536(0) 
 
 324 (t) 
 
 348 (2) 
 29(») 
 
 244 (fc); 421 
 (0; 436(A); 
 571 (s); 518 
 (x) 
 
 d 
 
Table of Cases. 
 
 Name of Case, 
 
 Eeg. V. Attorney-General 
 
 V. Betts and Stocker 
 
 V. Crampton 
 
 ». Cutler .. ..1816 
 
 V. .. ..1847 
 
 -». Else 
 
 - V. Pussell . . 
 
 - V. Hadden . . 
 
 - V. Lister . . 
 -V. Metoalf .. 
 
 ■ V Mill 
 
 ..1849 
 
 ..1849 
 ..1785 
 
 ..1826 
 ..1826 
 ..1826 
 ..1817 
 
 ..1850 
 
 ■ V. .. ..1851 
 
 - V. Mussary . . 1738 
 
 - V. Newton . . . . 1845 
 
 - V. Nickels 
 
 About 1846 
 
 - V, Steiner . . . . 1851 
 
 - V. WaUis 
 
 -». Walton .. ..1842 
 
 ■ V. Wheeler . . 1819 
 
 Kenard v. Levinstein 
 
 (V.-C.) 1864 
 
 (V.-C.) 1864 
 
 (L. J.) 1864 
 
 (V.-C.) 1865 
 
 Reynolds v. Amos 
 
 Bichardson v. Castrey 
 
 Eidgway v. Philip . . 1834 
 
 Roberts v. Hey wood . . 
 
 Roberts's Patent, In re . . 
 ■ 1839 
 
 Reference. 
 
 4T. L. R. 489 
 
 19 L. J., Q. B. 531 
 
 3 0. R; 367 
 
 1 Stark. 354; 1 Web. P. C. 76; 1 
 Carp. P. 0. 351 
 
 S C. & k: 215 ; Macrory's P. C. 124; 
 14 Q. B. 372 (n.) 
 
 3 0. & K. 233; Macrory's P. C. 138 
 
 14 Q. B. 372 (n.); Macr. P. C. 137 
 
 Bull. N. P. 76; Dav. P. C. 144; 1 
 Web. P. C. 76. Note to Harmar 
 ■V. Playne, 11 East, 109 (note (c)) 
 
 1 Carp. P. C. 449 .. 
 
 2 C. & P. 184 ; 1 Carp. P. C. 447 .. 
 Web. P. L. 80 
 
 2 Stark. N. P. 249; 1 Web. P. C. 
 141 (n.) 
 
 10 C. B. 379; 20 L. J., C. P. 16; 15 
 Jur. 59 ; 1 L. M. & P. 695 
 
 14Beav. 312 
 
 Bull. N. P. 76 a ; 1 Web. P. C. 41 . . 
 
 26 Lend. Jour., C. S. 361 .. .. 
 
 Hind. Law of Pat. p. 186 
 
 40 Newton's Lond. Jour., 71 .. 
 
 3 0. R. 1 
 
 2Q. B. 969 
 
 2 B. & Aid. 345; 1 Carp. P. C. 394 
 
 3 N. E. 665 ; 10 L. T. Rep., N. S. 
 94 
 
 11 L. T. Rep., N. S. 505; 13 W. E. 
 
 229 
 
 10 L. T. Rep., N. S. 177 
 
 5 N. R. 301 ; 2 Hem. & M. 628 ; 11 
 L. T. Rep., N. S. 766; 13 W. E. 
 382 
 
 Griff. 201; 3 0. R. 215 
 
 4 0. E. 265 
 
 1 C, M. & E. 415 ; 5 Tyr. 131 . . .. 
 
 27W. E. 454 
 
 IWeb. P. C. 573 
 
 Page in Digest 
 where cited. 
 
 524 
 
 524 
 
 561 
 
 14(?) 
 402 (<J) 
 268 (d) 
 224 (d) 
 
 40 (i); 
 
 (0 
 40 (i); 
 
 (0 
 457 (y-) 
 454 (o) ; 
 
 (0) 
 
 364 (o) 
 86(2/) 
 184 (3) 
 565 (a) 
 
 23 (o); 302 
 («); 568 0') 
 15 (m); 27 (ft) 
 149 (a) 
 151 (a) 
 364 (s) 
 
 247 («) 
 
 268 (e) 
 
 308 (e) 
 
 15 (I); 273 
 0-);423(tt); 
 566(c) 
 
 320 (o) 
 
 802(/); 385 
 
 (») 
 342 (m); 449 
 
 (a); 145(0 
 
 288 (to); 371 
 (0 
 
 509 (a) 
 156 (2) 
 206 (3) 
 477 (e) 
 108 (2); 120 
 (2) 
 
Table of Gases. 
 
 Name of Case. 
 
 Eobmson's Patent, In re . . 
 1845 
 
 ..1885 
 
 Eoden o. Tho London 
 Small Arms Company 
 
 (Q. B. D.) 1876 
 
 Eoebuok v. Stirling . . 
 EoUinSK. Hink3 ..1872 
 
 ■ EoUs V. Isaacs 
 
 (V.-C. B.) 1878 
 
 Eoper's Patent 
 
 Eothwell V. King 
 
 V. (No. 2) 
 
 V. (No. 3) 
 
 Eothwell's Patent .. 
 
 Eowcliffe V. Longford Wire 
 
 Company 
 V. Morris . . 
 
 Eubery's Patent, In re . . 
 
 1837 
 
 Eushton V. Crawley . . 1870 
 
 Eussell V. Bamsley . . 1834 
 
 V. Cowley 
 
 (L. C.) 1832 
 
 V. 
 
 ' (N. P.) 1834 
 
 (L. C.) 1834 
 
 (Exoh.) 1835 
 ■V. Criohton ..1837 
 
 ■1). Hatfield ..1885 
 
 ■ V. Ledsam . . 
 
 (Exch.) 1843 
 
 (Exch.) 1845 
 
 (Ex. Oh.) 1847 
 
 (H. L.) 1848 
 
 Reference. 
 
 5 Moo. P. C. C. 65, nom. Pow.'s 
 Pat. ; 2 Web. P. 0. 5 
 
 Griff. 267 
 
 46 L. J., Q. B. D. 213 
 
 1 Web. P. C. 451 (n.) 
 
 L. E., 13 Eq. 355; 41 L. J., Ch. 
 358; 20 W. E. 287; 26 L. T. 
 Eep., N. S. 56 
 
 19 Ch. D. 268; W. N. 1878, 37; 
 51 L. J., Ch. 170; 45 L. T. 704; 
 30 W. E. 243 
 
 4 0. E. 201 
 
 3 0. E. 379 
 
 4 0. E. 76 
 
 4 O.K. 397 
 
 Griff. 320 
 
 4 0. E. 281 
 
 3 0. E. 17, 145 
 
 1 Web. P. C. 649 (n.) 
 
 L. E. lOBq. 522 
 
 IWeb. P. C. 472 
 
 IWeb. P. C. 457 
 
 1 Web. P. C. 459 ; 1 Carp. P. C. 532 
 
 2 Coop. C. C. 59 (n.) ; 1 Web. P. C. 
 471 
 
 1 C, M. & E. 864 ; 1 Web. P. C. 463 ; 
 1 Carp. P. C. 557 
 
 1 Web. P. 0. 667 (n.) ; 15 Deo. of Crt. 
 of Sess. 1270 
 
 Griff. 204; 2 0. E. 144 
 
 7 Jur. 585 ; 1 D. & L. 347 ; 12 L. J., 
 Exoh. 439 ; 11 M. & W. 647 
 
 14 L. J., Exch. 353; 14 M. & W. 
 574 
 
 16 M. & W. 633 ; 16 L. J., Exch. 
 145 ; 9 Jur. 557 
 
 IH. L. Cas. 687 
 
 Page in Digest 
 wliere cited.' 
 
 78, 130 (») 
 
 271 (/) 
 216 0') 
 
 223 (2/) 
 547 (i) 
 
 227(»); 322 
 (0 
 
 113 (x) 
 344 (w) 
 392 (6) 
 392 (6) 
 544 (m) 
 509 (s) 
 
 241 (lo); 317 
 (^■):392(x); 
 453 (0 
 
 29 (p) 
 
 459(/); 530 
 (d) 
 336 (9) 
 325 (t) 
 
 184 (0 
 
 336 (ft) 
 
 461 (»); 513 
 (d); 573 (d) 
 
 325 (m); 363 
 (0 
 298 (0 
 
 301(1/); 307 
 iz); 308(3) 
 
 80 (p); 101 
 (i);133(/); 
 136 (0 ; 187 
 (6); 5o9(i) 
 
 133(/); 154 
 (g); 570 (o) 
 
 133(/); 136 
 (<) 
 d 2 
 
lii 
 
 Table of Cases. 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 ■where cited. 
 
 Eussell's Patent, In re 
 
 1857 
 
 Euston V. Tobin 
 Ruth van's Patent 
 
 Ryder's Patent .. ..1855 
 Ryland's Patent 
 
 ■ ■ V. Ashby's Patent 
 
 Bottle Company (C. A.) 
 1890 
 
 Samuda's Patent, In re . . 
 
 ■ 1846 
 
 Sarazin v. Hamel . . 1863 
 
 Saunders v. Aston . . 1832 
 
 Savory v. Price 
 
 (N. P.) 1823 
 Saxby v. Clunes 
 . V. EasterBrook 1872 
 
 V. Gloucester Wagon 
 
 Company (C. A.) 1880 
 
 V. 
 
 (H. L.) 
 •«. Hennett .,1873 
 
 Saxby's Patent, In re 1870 
 
 Schlumberger v. Lister . . 
 1860 
 
 Schlumberger's Patent, In 
 re 1853 
 
 Scott and Young, Ex parte 
 1871 
 Seed V. Higgins 
 
 (Q. B.) 1858 
 
 (Ex. Ch.) 1858 
 
 (H. L.) 1860 
 
 2 De G. & J. 130; 6 W. R. 95; 30 
 L. T. Rep. 178 
 
 2 Moo. P. C. C. i96 
 
 W.N. 1881, 6 
 
 Cited L. R., i App. Cas. 179; 1 
 Good. P. C. 578 
 
 Jobn. 213 
 
 5 0. R. 665 
 
 7 0. R. 175 
 
 Cit. Hind, on Pat. 534 
 
 32 Beav. 145 
 
 3 B. & Ad. 881 ; 1 L. J., K. B. 265 ; 
 1 Carp. P. C. 510 
 
 1 Ry & Mo. 1 ; 1 Web. P. C. 83 .. 
 
 43 L. J. Excb. 228 
 
 L. R.. 7 Ex. 207; 41 L. J., Ex. 113; 
 
 20 W. R. 751 ; 26 L. T. Rep., N. S. 
 
 439 
 W. N. 1880, 28, 1882, 102; Good. 
 
 P. C. 417 ; 7 Q. B. D. 305 ; 50 L. J., 
 
 Q. B. 577 
 
 2 Griff. 54 
 
 L. R., 8 Exch. 210; 42 L. J., Exch. 
 
 137 ; 22 W. E. 16 ; 28 L. T. Rep., 
 
 N. S. 639 
 7 Moo. P. C. C, ST. S. 82 ; 19 W. R. 
 
 513; L. R., 3 P. C. 292 
 2 E. & E. 870 ; 29 L. J., Q. B. 157 ; 
 
 9 W. R. 138; 3 L. T. Rep., N. S. 
 
 549; 6 Jur., N. S. 1336 
 9 Moo. P. C. C. 1; 2Eq. R. 1 
 
 L. R., 6 Ch. 274 ; 19 W. R. 425 . . 
 
 27 L. J., Q. B. 148; 4 Jur., N. S. 
 
 258 ; 8 E. & B. 755 
 27 L. J., Q. B. 411 ; 8 E. & B. 771 • 
 
 5 Jur., N. S. 540 
 8 H. L. Cas. 550 ; 30 L. J., Q. B. 
 
 314 ; 6 Jur., N. S. 1264 ; 3 L. T. 
 
 Rep., N. S. 101 
 
 40(0; 43(c);' 
 149 (r) 
 
 See White- 
 house'8 
 Patent 
 
 118 (g) 
 
 122 (!*) 
 19(;-) 
 
 324 (2*); 330 
 in*) 
 
 40 
 
 291 0') 
 501 (c) 
 
 438 (m) 
 
 179 (6) 
 
 328 (fe); 371 
 
 (M) 
 
 227 (o) 
 
 227 (o); 243 
 (ft); 264(0 
 155 (re) 
 
 119(1;); 124 
 (0 
 213 (6) 
 
 60 (r); 102 
 (g);105(i); 
 107 (r); 134 
 (fe); 137 (z) 
 
 47(0; 55 (m) 
 
 458 
 
 24 (0; 
 
 (d) 
 24 (0; 
 
 (d) 
 24 (0; 
 
 (?■); 204(e); 
 
 366 (a); 458 
 
 (d);469(n) 
 
 458 
 
 176 
 
Table of Cases. 
 
 Jiii 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 Sellers v. Dickiusoil . . 1850 
 
 Sequelin ». Terrell . . 
 
 (N. P.) 1867 
 
 SerreU's Patent 
 
 Shallenberger's Application 
 Sharp V. Brauer 
 
 Sharp's Patent, In re 1840 
 
 Shaw V. Bank of England 
 1852 
 Shaw i>. Jones .. '.. 
 
 Sheehan v. Great Eastern 
 Eailway Co. 1880 
 
 Sheffield, Ex parte . . 1872 
 
 Shillito V. Larmuth . . 
 Siddell «. Vickers .. 
 
 (C. A.) 
 (H. L.) 
 
 Siddell's Patent 
 Slelaff s Application . 
 Sillar's Patent ,. , 
 
 Simister's Patent, In re '.. 
 1842 
 
 Simon, Ex parte 
 
 Simpson v. Holliday . . 
 
 (V.-O.) 1864 
 
 (L. 0.) 1865 
 
 (H. L.) 1866 
 Simpson and Isaac's Patent, 
 
 In re 
 
 1853 
 
 Singer 1). Hasson ■ 
 (sub nomine) • 
 
 ^-^ V. Stassen & Co. . . 
 
 (C. A.) 
 
 Singer Sewing Machine Co. 
 
 V. Wilson (V.-C.) 1865 
 
 5 Exch. 312 ; 20 L. J., Exoh. 417 .. 
 16 L. T. Eep., N. S. 537 
 
 6 O.K. 101 
 
 6 0. B. 550 
 
 Griff. 205; 3 0. R. 193 
 
 1 Web. P. C. 641 ; 10 L. J., Ch. 86 ; 
 3 Beav. 245 
 
 22 L. J., Exch. 26, 210 
 
 6 0. K. 328 
 
 16 Ch. D. 59; 50 L. J., Ch. 68; 43 
 L. T. 432 ; 29 W. E. 69 
 
 L. E., 8 Ch. 237 ; 42 L. J„ Ch. 356 ; 
 21 W. E. 233 
 
 2 0. E. 1 
 
 W. N. 1888, 4; 1889, 134; 5 0. E. 
 81 ; 61 L. T. 233 ; 6 O. E. 464 
 
 ,39 Ch. D. 92 ; 5 0. E. 416 
 
 7 O. E. 292 ; W. N. 1890, 168 
 
 Griff. 320 
 
 5 0. E. 484 
 
 1 Good. P. C. 581 
 
 1 Web. P. C. 721 ; 4 Moo. P. C. C. 
 164 
 
 4T. L. E. 754 
 
 20 New. Lon. Jour., N. S. 105 
 
 13 W. E. 577 ; 12 L. T. Eep., N. S. 99 ; 
 
 21 New. Lon. Jour., N. S. Ill ; 5 
 
 N. E. 340 
 L. E., 1 H. L. 315 ; 35 L. J., Ch. 811 
 
 21 L. T. Eep. 81 ; 1 W. E. 259 .. 
 
 W. N. 1884, 83 ; 50 L. T. 326 . . . . 
 
 10. E. 121 
 
 5 N. E. 505; 11 L. T. Eep., N. S. 
 670 ; 12 L. T. Eep., N. S. 140 ; 
 13 W. E. 560 
 
 172 (g) ; 204 
 (o); 466 (o) 
 60(») 
 
 ld(k) 
 64(2,) 
 538(»); 548 
 
 (0) 
 
 15 (ft); 27 
 (S);29(2) 
 
 326 (y); 359 
 « 
 
 395 («) ; 445 
 U) 
 
 289 (a) 
 
 41 (s) 
 
 346 CO 
 372 (c) 
 
 156 (r); 414 
 (a;);420(«); 
 485(e); 539 
 (d); 577 (ic) 
 
 544 U) 
 
 51(2); 58(e) 
 
 116(/); 130 
 
 W 
 117(7,;); 128 
 
 0') 
 
 15(ft);27(/) 
 192 (Z); 443 
 
 (e);471(M); 
 
 481(0); 574 
 
 430 (0; 471 
 («) 
 
 458(e); 517 
 
 (0 
 54 (A); 59 
 
 (i); 558 (^■) 
 
 13(a) 
 20(6) 
 328 (e) 
 
liv 
 
 Table of Cases. 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 Slazenger v. Feltham 
 Smith V. Buckingham 1870 
 
 •». Buller.. ..1875 
 
 V, Davideon . . 1857 
 
 V. Dickenson . . 1804 
 
 V. Great Western 
 
 Railway Co. 1854 
 
 B.Lang .. ..1890 
 
 - V. London and North 
 
 Western Eailway Co. 
 
 1853 
 
 V. London and South 
 
 Western Eailway Co. 
 
 ■ *. Neale 
 
 - V. Scott 
 
 1854 
 .1857 
 
 .1859 
 
 V. Upton .. ..1843 
 
 Smith's Patent, In re 1847 
 1850 
 
 1855 
 
 ; .. ..1885 
 
 Smith's Application . . 
 Soames's Patent, In re 1843 
 
 Societe Anonyme dea Manu- 
 factures de glaces v. 
 Tilghman's Patent Sand 
 Blast Co. <C. A.) 
 
 Somerset and Walker's 
 Patent, In re 
 
 Southworth's Patent, In re 
 1837 
 
 Speckhart v. Campbell, 
 Achnaoh & Co. 
 
 Spence's Patent, In re 1859 
 
 Spencer v. Jack (L. J.) 1862 
 
 V. (L. 0.) 1864 
 
 V. The Ancoats 
 
 Vale Rubber Company 
 
 5 T. L. E. 364 ; 6 0. E. 130, 232 .. 
 18 W. E. 314 ; 21 L. T. Sep., N. S. 819 
 
 L. R., 19 Eq. 473 
 
 19C. S. 691 
 
 3B. &P. 630 
 
 3 W. E. 69 ; Macr. P. C. 221 . . . . 
 
 7 0. E. 148 
 
 2 E. & B. 69 ; 17 Jut. 1071 ; Macr. 
 P. C. 188 
 
 Kay, 408; 23 L. J., Ch. 562; 23 
 L. T. Rep. 10 ; 2 Eq. Eep. 428 ; 2 
 W. E. 310 
 
 2 C. B., N. S. 67 ; 3 Jur., N. S. 516 ; 
 26 L. J., C. P. 143 ; 5 W. E. 563 ; 
 28 L. T. Rep. 87 ; 29 L. T. Eep. 93 
 
 6 C. B., N. S. 771 ; 28 L. J., C. P. 
 325; 5 Jur., N. S. 1356 
 
 6M. &G. 251 
 
 30 Lond. Jour. 451 
 
 7 Moo. P.O. C. 133 
 
 Macr. P.O. 232 
 
 Griff. 263; 2 O. R. 14 
 
 Griff. 268 
 
 IWeb. P. 0. 729 
 
 25 Ch. D. 1; 53 L. J., Ch. 1; 49 
 L. T. 451 ; 32 W. E. 71 
 
 13Ch. D. 397 .. 
 1 Web. P. C. 486 
 W.N. 1884,24 .. 
 
 3DeG. & J. 523; 7W. R. 157 .. 
 3 De G., J. & S. 346; 1 N. R. 114.. 
 11 L. T. Rep., N. S. 242 
 
 4T. L. E. 681; 6 O. R. 46 .. .. 
 
 522 (&) 
 70(») 
 388 (/) 
 157(2/); 242 
 («) 
 84 
 319 (u) 
 
 306 (a) 
 173 (jy, 287 
 («); 373 (/) 
 
 348 (m); 368 
 
 0-) 
 
 68(0) 
 
 90 U) 
 
 353 (mO 
 
 134 (S) 
 
 101 (m); 107 
 (2>);110(i): 
 137 (k); 139 
 (ft) 
 
 23(g) 
 
 135 (r) 
 
 37(6) 
 109(d); 113 
 
 (2/): 117(0 
 170(2/); 216 
 
 (0; 548 («) 
 
 42 (m) 
 
 100(e); 
 (") 
 353 (ft) 
 
 108 
 
 40 (m) 
 
 354 (p) 
 
 267 (o); 504 
 (ft) 
 
 83 (v); 333 
 (z*); 352 (ft); 
 382 (3*) 
 
Table of Oases. 
 
 Iv 
 
 Name of Case. 
 
 Spiel's Patent 
 
 Spilsbury v. Clough ..184:2 
 
 Stafford's Patent, In re 1838 
 
 Stead V. Anderson . . 
 
 (N. P.) 1846 
 
 ■ — V. 
 
 (C. P. 1847 
 
 V. Carey . . . . 1845 
 
 ■ V. WiUiams 
 
 (N. P.) 1843 
 
 (0. P.) 1844 
 
 Stead's Patent, In re 1846 
 Steedman v. Marsli . . 1856 
 Steiner v. Heald . ... 1851 
 
 Stevens v. Keating . . 
 
 (N. P.) 1847 
 
 (V.-C.) 1847 
 
 (L. 0.) 1847 
 
 (Bxcli.) 1848 
 
 (L. 0.) 1850 
 
 Stewart's Patent 
 
 Stooker i;. Bodgers .. 
 
 (N. P.) 1848 
 
 V. Waller .. 1845 
 
 • V. Warner 
 
 .1845 
 
 Stocking V. Llewellyn 1842 
 
 StoU's Patent, In re . . 1853 
 
 Stdner ». Todd 
 
 (M. K.) 1876 
 
 Stoney's Patent 
 
 Stubbs's Patent 
 
 Sturtz V. De la Hue . . 1828 
 
 5 0. E. 281 
 
 2 G. &D. 17; 6 Jur. 579; 2 Q. B. 
 466 ; 1 Web. P. 0. 255 ; 11 L. J., 
 Q. B. 109 
 
 IWeb. P. C. 563 
 
 2Web. P. 0. 147 
 
 2 Web. P. 0. 151 ; 16 L. J., C. P. 
 250 ; 4 C. B. 806 
 
 1 0. B. 496; 9 Jur. 511; 14 L. J., 
 C. P. 177 
 
 2Web. P. C. 126 
 
 7 M. & G. 818 ; 8 Scott, N. E. 449 ; 
 8 Jur. 930 ; 13 L. J., 0. P. 218; 2 
 Web. P. 0. 137 
 
 2Web. P. 0.143 .. .. .. .. 
 
 2 Jur. N. S. 391 .. .. 
 
 6 Bxoh. 607 ; 17 Jur. 875 ; 20 h. J., 
 Exch. 410 
 
 2Web.p' 0.181 .. 
 
 2Web. P. 0. 175 
 
 2 Web. P. 0. 176 ; 2 Phil. 333 
 
 2 Exoh. 772 ; 19 L. J., Excb. 57 ; 2 
 Web. P. C. 192 
 
 IMao. &G. 659 
 
 Griff. 264; 3 0. E. 7 
 
 ICar. &Kir. 99 
 
 9 Jur. 136; 14 L. J., 0. P. 90; 1 
 
 0. B. 148 
 
 ^^ee Stooker ■!). Waller 
 
 3L. T. Eep. 33 
 
 21 L. T. Eep. 233 ; 1 W. E. 472 .. 
 L. E., 4 Oh. D. 58 ; 46 L. J., Oh. 32 ; 
 
 35 L. T. Eep., N. S. 661 ; 25 
 
 W. E. 38 
 
 5 0. E. 518 
 
 Griff. 298 
 
 5 Euss. 322; 1 Web. P. 0. 83 .. .. 
 
 Page in Digest 
 where cited. 
 
 42(40) 
 12 (0; 287 
 (») 
 
 108 (_x) 
 236 (to') 
 
 154 (ft); 187 
 (ci);202(«); 
 246 (r) 
 
 78 
 
 236 (m) ; 275 
 (w); 496 (7c); 
 564 (v) 
 
 145 0'); 245 
 (2) 
 
 78; 359(2)) 
 6(?) 
 525 («) 
 
 187(/); 204 
 (6); 514 (ft) 
 
 339 (y) 
 
 339(1/); 351 
 (6) 
 464 (j/) 
 
 384 (o) 
 
 113 (mi) 
 383 («) 
 
 23()i) 
 
 23(») 
 359(0) 
 47 (p) 
 
 252(3); 414 
 (0 
 
 116(3) 
 52(t«);58(z) 
 
 358 (I) ; 424 
 («)) ; 439 
 ()i); 563 (s) 
 
Ivi 
 
 Table of Oases. 
 
 !Name of Case. 
 
 Reference. 
 
 Fage in Digest 
 "where cited. 
 
 Sugg i>. Bray 
 V. Silber 
 
 .. ..1876 
 (C. A.) 1877 
 
 Swaine's Patent, In re 1837 
 
 Swinborne v. Nelson . . 1853 
 
 Sykes v. Howarth .. 
 
 (Fry, J.) 1879 
 
 Tailors of Ipswich v. Sher- 
 ring 
 
 Talbot V. La Koobe ..1851 
 
 Tangyeu Stott .. ..1865 
 Tatham v. Dania 
 
 Taylors. Hare .. ..1805 
 
 Teague's Patent 
 
 Templeton v. Macfarlane . . 
 (H. L.) 1848 
 
 Tennant'a Case . . . . 1802 
 
 Tetley ». Easton 
 
 (N. P., Bxoh.) 1852 
 
 (Q. B.) 1853 
 
 (C. P.) 1856 
 
 (0. P.) 1857 
 
 Thomas v. Foxwell . . 
 
 (Q. B.) 1858 
 
 V. . . 
 
 (Ex. Ch.) 1859 
 
 «. Hunt ..1864: 
 
 . u. TilUe ..1866 
 
 D. Welch 
 
 (0. P.) 1866 
 
 ■ V. Winter . . 1867 
 
 Thompson v. James . . 1868 
 
 1 0. E. 45 ; 2 0. E. 223 ; Griff. 210 ; 
 54 L. J., Ch. 132 
 
 L. E., 1 Q. B. D. 362 
 
 L. E., 2 Q. B. D. 493 ; 45 L., J. Q. B. 
 
 460 
 
 IWeb. E. 559 
 
 16 Beav. 416 ; 22 L. J., Ch. 331 .. 
 
 L. E., 12 Ch. D. 826; 48 L. J., Ch. 
 769 ; 41 L. T. Eep., N. S. 79 ; 28 
 W. E. 215 
 
 See Olothworkers of Ipswich Case .. 
 
 15 C. B. 310 ; 2 C. L. Eep. 836 ; M. 
 Dig. 210 
 
 14 W. E. 128, 386 .. .. .. .. 
 
 Griff. 218 
 
 1 B. & P., N. E. 260 
 
 Griff. 298 
 
 IH. L. Cas. 595 
 
 Cit. Dav. P. C. 429 ; 1 Web. P. C. 
 125 ; 1 Carp. P. C. 177 
 
 Maer. P. 0. 48 
 
 2 Ell. & B. 956; 18 Jur. 350; 23 
 L. J., Q. B. 77 ; Maor. P. C. 82 
 
 25 L. J., C. P. 293; 18 C. B. 643 .. 
 2 C. B., N. S. 706 ; 26 L. J., C. P. 269 
 
 5 Jur., ST. S. 37 
 
 6 Jur., N. S. 271 
 
 17 C. B., N. S. 183 
 
 17 Ir. C. L. E. 783 
 
 L. E., 1 C. P. 192 ; 12 Jur., N. S. 316 ; 
 35 L. J., C. P. 200 
 
 17 L. T. Eep., N. S. 148 
 
 32 Beav. 570 
 
 548 (m) 
 
 357 (ft) 
 312 (g) 
 
 108 (u) 
 
 318 (0 
 
 161(/); 170 
 (w) ; 297 
 (0; 508 (8) 
 
 492 («) 
 295 (z) 
 
 357 (e) 
 
 177 (a;); 538 
 (r) 
 
 211 (s) 
 
 49(3) 
 230 (6) 
 
 242 (c) 
 
 442(a); 457 
 (z); 467(e); 
 488 (r); 577 
 («*) 
 
 448 (w) 
 
 319 («*) 
 
 23 (r); 482 
 (s);526(«)) 
 
 176(g); 488 
 (») 
 
 458 (c); 468 
 (&) 
 
 164(g); 214 
 (d!) 
 
 320 (d) 
 
 17(s);418(s); 
 41 5 (z); 430 
 («); 470(0 
 
 294 (w) 
 
 528 (o) 
 
Tahle of Gases. 
 
 Ivii 
 
 Name of Case. 
 
 Beference. 
 
 Page in Digest 
 where cited. 
 
 Thomson v. American 
 Braided Wire Company 
 
 V. Batty 
 
 • V. Hughes .. 
 
 (C. A.) 1889 
 
 -«. Moore .. 
 
 (H. L.) 1890 
 Thorn v. Worthing Skating 
 Kink Company 
 
 (M. E.) 1376 
 Tiokelpenny -v. Army and 
 Navy Co-operative So- 
 ciety 
 
 Tielens «. Hoop* ..1850 
 
 Tilghman's Sand Blast Co. 
 V. Wright 1884 
 
 Tiilie and Anderson's 
 Patent, lure .. ..1854 
 
 Tolhauseu's Patent, In re 
 
 1866 
 Tolson's Patent, In re 1856 
 
 Townsend v. Haworth 
 
 (M. K.) 1875 
 
 Trotman v. Wood 
 
 .1864 
 
 Trotman's Patent, In re 
 
 1866 
 
 Turner v. Winter ., 1787 
 
 :Ungar v. Sugg & Co. 
 
 Union Electrical Power 
 and Light Company ■». 
 Electrical Storage Com- 
 pany (C. A.) 
 
 United Horseshoe and NaU 
 Company v. Stewart & 
 Co. 
 
 (H. L.) 
 
 V. Swedish 
 
 Horseshoe and Nail Com- 
 pany 
 
 6 0. K. 518. See American Braided 
 Wire Company v. Thomson 
 
 4T. L. E. 36; 6 0. E. 84 .. .. 
 
 W. N. 1889, 212; 7 O. E. 71, 187 .. 
 
 6 0. E. 426 
 
 7 0. E. 325.. '. 
 
 L. E., 6 Ch. d; 415 («) 
 
 5 0. E. 405 
 
 5Bxch. 830 
 
 Griff. 216; 1 O. E. 103 .. .. , .. 
 
 2W.E.182;22L.T.Eep. 249 Made 
 ahsolute by Patents Act, 1883, sec. 
 12 
 
 14W. E. 551 
 
 6 De G., M. & G. 422 ; 4 W. E. 518 
 
 Not fully reported. For imperfect 
 note of judgment of M. E., see L. K., 
 12 Ch. D. 831 (n.) 
 
 16 C. B., N. S. 479 
 
 L. E., 1 p. 0. 118 ; 3 Moo. P. 0. C, 
 N. S. 488 
 
 1 T. E. 602 ; Dav. P. C. 145 ; 1 Web. 
 P. C. 77 
 
 5T. L. K. 372; 6 O. E. 337 .. .. 
 
 38 Ch. D. 325 ; 5 O. E. 329 ; 36 
 W. E. 913 
 
 2 O. E. 122; 3 O. E. 139; 4 0. E. 
 130 ; Griff. 217 
 
 13 App. Cas. 401 ; 5 0. E. 260 .. 
 
 6 0. E. 1 
 
 510 (6) 
 
 260 (y) ; 317 
 
 (o); 349(8); 
 
 445 (i) ; 500 
 
 (») 
 324(g); 352 
 
 (fe*) 
 
 93 (j); 201 
 (p); 544(3) 
 544 (3) 
 
 193 (g) 
 
 394 (m); 539 
 (») 
 
 212 (») 
 298 (fc) 
 
 557 
 
 40 
 
 47(g); 60 (s) 
 8(0;165(«) 
 
 91 (p); 370 
 
 123 (r) 
 
 364 («) ; 436 
 (i); 571(0 
 
 554 (c) 
 
 306 (tt); 553 
 id) 
 
 376 (r) 
 
 376 («•) 
 
 521(3); 579 
 (6) 
 
Iviii 
 
 Table of Cases. 
 
 I^ameof Case. 
 
 United Telephone Company 
 V. Bassano 
 
 (C. A.) 
 V. Dale . . 
 
 V. Donohoe . . 
 
 CO. A.) 
 
 V. Equitable 
 
 Telephone Company 
 
 V. Fleming (1) 
 
 V. (?) 
 
 V. Harrison, Cox. 
 
 Walker & Co. 
 
 • V. Henry 
 
 V. London and 
 
 Globe Telephone and 
 Maintenance Company 
 
 V. Mitchell 
 
 V. Mottishead 
 
 ■ V. Nelson 
 
 V. Patterson . . 
 
 11. St. George . , 
 
 V. Sharpies . . 
 
 ■ V. Smith 
 
 ■ V. Tasker 
 
 ■ V. Townshend 
 
 and Mercer 
 V. Walker 
 
 TJnwin v. Heath 
 
 Useful Patents Company v. 
 Kylanda 
 
 Van de Poele's Application 
 1889 
 
 Van Gelder's Patent 
 
 (C. A.) 1888 
 (_8ee also Simon, Ex parte) 
 
 Van Gelder Apsimon Com- 
 pany V. Sowerby Bridge 
 Flour Society 1890 
 
 Reference. 
 
 2 O. E. 70 ; 2 T. L. E. 459, 840 .. 
 
 3 O. E. 295 ; Griff. 220 ; 2 T. L. E. 
 354, 840 
 
 25 Ch. D. 778; 53 L. J., Ch. 295 ; 
 Griff. 227 
 
 31 Ch. D. 899; W. N. 1886. 24; 3 
 O. E. 45 ; Griff. 227 ; 2 T. L. E. 331 
 
 5 0E. 233 .. .. 
 
 3 0. E. 268 
 
 3 0. E. 282 
 
 21 Ch. D. 720 ; 51 L. J., Ch. 705; 46 
 L. T. 620 ; 30 W. E. 724 
 
 2 0. E. 11; Griff. 228 
 
 26 Ch. D. 766 ; 32 W. E. 870 ; 1 O. E. 
 117 
 
 38W. E. 70 
 
 3 0. E. 213; Griff. 230 
 
 W.N. 1887, 193.. .. 
 
 60L. T. 315; 6 O. E. 140 .. .. 
 
 3 0. E. 33 and 321 ; Griff. 230 
 
 29 Ch. D. 164 ; 2 O. E. 28 ; Griff. 
 232 ; 54 L. J., Ch. 633 ; 1 T. L. E. 
 259 ; 52 L. T. 384 ; 33 W. K. 444 
 
 38W. E. 70 
 
 5 0. E. 628 ; 6 0. E. 38 ; W. N..1888, 
 222 
 
 3 0. E. 10 
 
 56L. T. 508; 4 0.E. 63 
 
 fe Heath ». Uuwin 
 
 2 0. E. 255; Griff. 234 
 
 7 0. E. 70 
 
 6 0. E. 22 
 
 6 T. L. R.. 150 ; 59 L. J., Ch. 292 ; 7 
 O. K. 41, 208 
 
 Page in Digest 
 where cited. 
 
 577 (w) 
 
 479 (7c); 577 
 (") 
 333 (2/) 
 
 382 (i) 
 
 349 (i) 
 
 298 (m) 
 
 391 (0 
 
 256 (i;); 298 
 0-);389(»); 
 417 (c) 
 
 170 (2) 
 26 (a); 162 
 («■) 
 
 382 0') 
 292 (m) 
 182 (i) 
 395 (s) 
 199 (/) 
 95 (6); 
 (i) 
 
 163 
 
 382 0') 
 292 (p); 352 
 (9) 
 390 (») 
 
 376 (y) 
 
 155 (ft) ; 189 
 ijy, 365 
 (J/); 468 (ft): 
 570 (p) 
 
 264 (m) 
 
 64(6) 
 396 (a) 
 
 290 (e) 
 
Table of Cases. 
 
 lix 
 
 Name of Case. 
 
 Reference. 
 
 Page in Digest 
 where cited. 
 
 Van Gelder Apeimon Com- 
 pany V. Sowerby Bridge 
 Flour Society (0. A.) 
 
 Vavasseur v. Krupp . . 
 
 (M. K.) 1878 
 
 (C. A.) 1878 
 Vidi 17. Smith .. ..1854 
 
 Vincent's Patent, In re 1867 
 
 Von Bucli's Application 
 
 Von Heyden v. Nenstadt . . 
 
 Vorwerk and Son v. Evans 
 (C. A.) 1890 
 
 Walker v. Clarke 
 
 Walker v. Hydro-carbon 
 Syndicate 
 
 • V. ^- (C. A.) 
 
 Walker's Patent .. .. 
 
 Wallace's Application 
 
 Wallington v. Dale . . 1852 
 
 Wallis and Eatoliffe's Ap- 
 plication 
 
 Walton V. Bateman . . 
 
 (N. P.) 1842 
 
 V. Lavater 
 
 .1860 
 
 ■ V. Potter 
 
 (N. P.) 1841 
 
 44 Ch. D. 374; W. N. 1890, p. 109; 
 7 O. R. 208 
 
 L. E., 9 Ch. D. 351 ; 39 L. T. Eep., 
 
 N. S. 437 
 L. E., 9 Ch. D. 353 ; 39 L. T. Eep., 
 
 N. S. 438 ; 27 W. E. 176 
 
 3 Ell. & Bl. 969 ; 1 Jur., N. S. 14 ; 23 
 L. J., Q. B. 342 ; 2 C. L. E. 1573 
 
 L. E., 2 Ch. 341 ; 15 W. E. 524 .. 
 
 2 Griff. 40 
 
 14 Ch. D. 230; 50 L. J., Ch. 126 .. 
 
 7 0. E. 167, 265 
 
 56 L. J., Ch. 239; 56 L. T. Ill 
 
 3 T. L. E. 297; 35 W. E. 245 
 
 4 O. E. Ill 
 
 2 O. E. 3 ; Griff. 238 
 
 3 0.E. 253 
 
 2 Griff. 22 
 
 6 0.E. 134 
 
 7 Exch. 888 ; 23 li. J. Ex. 49 . . . . 
 
 1 
 
 5 0. E. 347 
 
 IWeb. P. C. 613 
 
 8 C. B., N. S. 162; 29 L. J., C. P. 
 275; 6 Jur., N. S. 1251; 3 L. T. 
 Eep., N". S. 272 
 
 1 Web. P. C. 585 
 
 4 Scott, N. E. 91 ; 3 M. & G. ill ; 1 
 (0. P.) 1841 I Web. P. C. 597 ; 11 L. J., C. P. 138 
 
 290 (e) 
 
 82(0 
 
 332 (w) 
 
 326(«); 369 
 (0 
 40 ; 41 (r) 
 52(2) 
 170 (a;) 
 
 480 (p); 500 
 (w*) 
 
 551 (») 
 
 402 (e) 
 
 381 (d) 
 18 (w) 
 
 51(8) 
 
 12 (m); 27 
 (j); 429(0); 
 514 (i) 
 
 53(c) 
 
 144 (i) ; 154 
 (e); 186 to; 
 235 (ky, 275 
 (0;301(w); 
 428 (j); 442 
 (2); 482(5); 
 496 (i); 574 
 (ft) 
 
 69 (3); 90 
 (h); 164 (o); 
 203(«); 288 
 («) 
 
 185 (w) ; 203 
 (j/); 275(8); 
 362 (gr); 427 
 Qi) ; ■ 441 
 (lo); 513(e) 
 
 378(«); 523 
 (2) 
 
Ix 
 
 Table of Cases. 
 
 Name of Case. 
 
 Ward «. Livesey ., 
 
 Warman s Application 
 
 Warwick ■». Hooper ..1850 
 
 Washburn and Moen Manu- 
 facturing Company v. 
 Cunard Steamship Com- 
 pany and Parkes 
 
 • V. Dublin and 
 
 Liverpool Steam Packet 
 Company 
 
 V. Patterson 
 
 (C. A.) 
 
 Watling V. Stevens 
 
 (C. A.) 
 
 ■ V. Pears 
 
 Watling's Patent 
 Watson V. HoUiday . . 
 
 (C. A.) 
 
 ..1809 
 
 Webster's AppHoation 
 
 Webster «. Uther ..1824 
 
 Wegmann v. Corcoran 
 
 (Pry, J.) 1878 
 
 V. ■ — — 
 
 (0. A.) 1879 
 
 Welch's Patent 
 
 Wells's Case .. ..1836 
 Wenham ». Carpenter 
 Wenham Company v. May 
 
 Werderman ■». Societe 
 G&erale d'Eleotricitg 
 
 Westhead v. Keene . . 1838 
 
 Westinghouse 1). liancashire 
 and Yorkshire Kailway 
 
 Westinghouse's Patent . . 
 1885 
 
 Westrupp and Gibbins's 
 Patent, In re, Ex parte 
 WeUs 1836 
 
 Wheatstone v. Wild ..1861 
 
 White «.Fenn .. ..1867 
 
 5 O.K. 102 
 
 2 Griff. 43 
 
 3Mao. &G. 60 
 
 6 0.E. 398 
 
 6 0. E. 398 
 
 lO.B. 157, 191 
 
 2 0. E. 27; Griff. 239 
 
 3 0. E. 37 
 
 3 0. E. 147; Griff. 240 
 
 Griff. 320 
 
 20 Ch. D. 780; 48 L. T. 545; 30 
 
 W. E. 747 
 52 L. J. Ch. 543 ; 31 W. E. 536 .. 
 
 2 Campbell, 294 
 
 6 0.E. 163 
 
 Godson's Law of Patents, ,232 . . 
 
 L. E., 13 Ch. D. 65 ; 39 L. T. Eep., 
 N. S. 563; 27 W. E. 357 
 
 L. E., 13 Ch. D. 83; 41 L. T. Eep., 
 
 N. S. 358 
 
 Griff. 300 .. .. 
 
 See Westrupp & Gibbins's Patent . . 
 5 0. E. 68 
 
 4 0.E. 303 
 
 19Ch. D. 246 
 
 1 Beav. 287 ; 8 L. J., Ch. 89 ; 2 Web. 
 P. C. 36 (n.) 
 
 Griff. 244 ; 1 0. E. 98, 229 .. .. 
 
 Griff. 315 
 
 IWeb. P. C. 554 
 
 Griff.'247 
 
 15 W. E. 348 ; 15 L. T. Eep., N. S. 605 
 
 Page in Digest 
 where cited. 
 
 217 (m) ; 394 
 
 (0) 
 
 60(0 
 213 (2/) 
 289 (d) 
 
 289 ((J) 
 
 381 (a) 
 381 (a) 
 
 453 (?t) 
 
 381 (e) ; 418 
 (e) ; 453 
 Gt); 459® 
 
 544 (7c) 
 
 372 (6) ; 
 O') 
 
 73 (ft) 
 
 58(3) 
 
 49(/) 
 
 184 (p) 
 
 432 (o) 
 
 389 
 
 476 (d) 
 
 49 Qi) 
 140 (g) 
 26 (d) 
 200 (i) 
 372 (a) 
 
 286 (m) ; 290 
 
 W 
 477(/);483 
 
 W 
 21 (c); 26 
 
 (c) 
 78; 140(g) 
 
 7(&) 
 177 («) 
 
Table of Oases. 
 
 Ixi 
 
 Kame of Case. 
 
 Reference, 
 
 37 L. J., Oh. 204 ; 17 L. T., N. S. 348 
 1 Web. P. 0. 649 (n.) 
 
 1 Web. P. C. 473 ; 2 Moo. P. C. C. 
 496 
 
 IDr. &S. 110 .. 
 
 L. E., 4 P. 0. 89 ; 8 Moo. P. 0. C, 
 N. S. 300 
 
 5 0.E. 690 
 
 20 L. T. Kep., N. S. 10 
 
 Pari. Kep. 1829, p. 183 ; cited E. v. 
 Arkwright, printed case, 162 ; Dav. 
 P. C. 96 
 
 5 Jiir., N. S. 696 ; 28 L. J., Ch. 886; 
 28 Beav. 93 
 
 7 0, E. 62 
 
 IN. E. 234 
 
 5 0. E. 245, 675 
 
 2 O.K. 175 
 
 23W. K. 546 
 
 L. K.. 4 P. C. 93; 8 Moo. P. C. C, 
 N. S. 306 
 
 6 O.K. 359; 7 O. E. 30 
 
 1 O. E. 76 .. 
 
 L. E., 12 Cb. D. 303 ; 28 W. E. 329 
 
 2 Coop. 58 (n.) ; 35 Eep. Aits, 254 . . 
 
 Holt, N. P. 58 ; 1 Web. P. 0. 82 and 
 44 : 1 Carp. P. C. 290 
 
 1 Web. P. C. 740; 3 Moo. P. C. C. 
 171 
 
 2Web. P. C. 18 
 
 2 Griff. 44 
 
 3 O. K. 357; 4 0. K. 166; 56 L. T. 
 
 347 
 
 L. R., 4 Q. B. 213 ; 38 L. J., Q. B. 88 ; 
 . 20 L. T. Eep., N. S. 277 
 
 L. E., 4 Q. B. 730; 38 L. J., Q. B. 
 327 ; 20 L. T. Bep., N. S. 1007 
 
 Page In Digest 
 where cited. 
 
 Wbite V. Toms 
 
 ..1867 
 
 Wbitehouse's Patent, In re 
 1830 
 
 1838 
 Wbitton V. Jennings .'.I860 
 Wield's Patent, In re 1871 
 
 Willacy's Patent 
 
 Willcox Sewing Machine 
 Company v. Wood.. .1869 
 
 Williams v. Brodie . . 
 
 Before 1785 
 
 V. Nash- . . 1859 
 
 — — — V. Nye 
 
 (C. A.) 1890 
 
 Willis V. Davison . . 1863 
 
 Wilson V. Barbour . . 
 
 V. Church Engineer- 
 ing Company 
 
 V. Gann 
 
 (V.-O. H.) 1875 
 
 Winan's Patent, In re 1872 
 
 Winby ». Manchester Steam 
 Tramways Company 
 
 Winter v. Baybut 
 Wirth's Patent, In re 
 
 (L. C.) 1879 
 
 Wood V. Cookerell .. 1819 
 
 V. Zimmer 
 
 (N. P.) 1815 
 
 Woodcroft's Patent, In re 
 1841 
 
 , In re 
 
 1846 
 
 Woodbead's Application . . 
 
 Woodward v. Sansum 
 
 Wren». Weild .. ..1869 
 r. .. ..1869 
 
 530 (c) 
 29 (o) 
 
 108 (w); 136 
 
 360 (v) 
 
 125 («j); 142 
 (a) 
 
 104(2); 119 
 
 (X) 
 
 343 (g) 
 
 445 (&) 
 
 59 (I); 81 
 (g) ; 559 (7c) 
 
 511 (c) 
 
 534 (m) 
 209 (g) 
 550 (s) 
 
 311 (») 
 
 133 
 
 202 (g) ; 260 
 (2);265(7j); 
 576 (p) 
 
 13 (ic) 
 
 63 (w); 278 
 (?) 
 345 (2) 
 
 265(0); 437 
 (&) 
 
 128 (i); 139 
 
 0-) 
 
 114(a); 117 
 (m7;131(w) 
 
 58 (fl!) . 
 
 414 («;)'; -420 
 (ft)- 
 
 296.(e) 
 546(A) 
 
Ixii 
 
 Table of Cases. 
 
 Name of Case. 
 
 Wright V. Hitchcock . . 1870 
 
 Wrightfs Patent, In re 
 Shuttleworth, Ex parte 
 1837 
 
 Wright's Patent, In re 
 
 Yates, Ex parte . . 
 
 1839 
 .1843 
 
 .1869 
 
 Yates and Kellett's Patent 
 
 Young V. Fernie 
 
 (L. C.) 1863 
 
 (V.-C.) 1864 
 
 (H. L.) 1866 
 
 ■ V. Kosenthal . . 
 
 1883-84 
 •©.White .. ..1853 
 
 Reference. 
 
 L. E., 5 Exch. 37 ; 39 L. J., Exch. 97 
 
 IWeb. P. C. 561 
 
 IWeh. P. 0. 575 
 
 IWeb. P. 0. 736 
 
 L. B., 5 Ch. 1 : 18 W. E. 1, 153 ; 21 
 L. T. Eep., N. S. 663 
 
 4 0. E. 150; 3T. L. K. 353 .. .. 
 
 1 De G., J. & S. 353 ; 9 L. T. Eep., 
 N. S. 590 ; 12 W. E. 221 ; 10 Jur., 
 N. S. 58 ; 33 L. J., Ch. 192 ; 3 N. E. 
 270 
 
 4Giff. 577; 10 Jur., N. S. 926; 12 
 W. E. 901 ; 10 L. T. Eep., N. S. 
 861; 9 Prac. Mech. Jour., 2nd 
 Series, 102 ; 4 N. E. 218 
 
 L. E., 1 H. L. 63; 35 L. J., Ch. 523; 
 
 14 W. E. 714; 12 Jur., N. S. 437 ; 
 
 14 L. T. Eep., N. S. 637 
 Griff. 249; 1 O. E. 29 
 
 23 L. J., Ch. 190; 2 Eq. Rep. 213; 
 18 Jur. 277 ; 17 Beav. 532 
 
 Page in Digest 
 where cited. 
 
 165(0; 178 
 (z); 415(a); 
 450(/);472 
 (jo) ; 505 
 (m);569(o) 
 
 100 id) 
 
 116 (K) 
 109 (e) 
 
 47 (r); 57(1) 
 
 140 (p) 
 354 (s) 
 
 250(6); 365 
 (0; 516 (p) 
 
 355 (a;) 
 
 182(/); 227 
 (p); 574(0 
 
 291 (0 
 
 TABLE OF EULES. 
 
 Patent Rules, 1890. 
 
 Page. 
 
 Patent Rules, 1890. 
 
 Page. 
 
 5 
 
 6 
 
 7 
 
 8 to 14 
 
 15 
 
 16 
 
 16(A) 
 
 17 and 17 (A) .. .. 
 
 18 to 23 
 
 24 to 29 
 
 30 to 33 
 
 146 
 36 
 
 558 
 
 36,37 
 
 94 
 
 28 
 
 279 
 
 358 
 
 37 
 
 62,63 
 
 85 
 
 34 to 44 
 
 45 to 51 
 
 52 to 59 
 
 60 to 66 
 
 67 to 78 
 
 79 
 
 80 
 
 39 
 
 558 
 
 11 
 
 77,78 
 
 398, 399 
 
 75 
 
 77 
 
 Eules of Privy Council 
 Eules of Law Officers 
 
 98,99 
 380 
 
( Ixiii ) 
 TABLE OF STATUTES. 
 
 Repealed or Amended. 
 
 Paige in 
 Digest 
 wliere 
 cited. 
 
 21Jao. 1, u. 3 (1623), s. 6 .. 
 
 ss. 10, 11, 12 
 
 5 & 6 Will. 4, 0. 62 (1835), s. 11 
 5 & 6 Will. 4, c. 83 (1835) .. 
 2&3 Vict. u. 67(1839) .. 
 7&8Vict. 0.69(1844), ss, 
 
 2-5 
 6,7 
 
 15 & 16 Vict. o. 83 (1852) .. 
 
 16 & 17 Vict. c. 5 (1853) 
 16&17 Vict. 0. 115(1853) .. 
 22 Vict. 0. 13 (1859) .. .. 
 28 & 29 Vict. 0. 3 (1865) 
 
 33 & 34 Vict. c. 27 (1870) .. 
 43 & 44 Vict. 0. 10 (1880), s. 5 
 45 & 46 Vict. c. 72 (1882), s. 16 
 46&47 Vict. c. 57,s. 4 .. .. 
 
 s. 5, (1) to (8) 
 
 ■ — (4) and (5) 
 
 . s. 6 .. .. 
 
 ■s. 7 .. 
 
 ■3.8 
 
 - s. 9,(1) to (4) 
 sub-s. (5) 
 
 -8.10 
 
 s. 11 
 
 8.12 
 
 s. 13 
 
 8.14 
 
 8.15 
 
 8. 16 
 
 8.17 
 
 s. 18 
 
 — -83.19,20,21 
 
 s. 22 
 
 8.23 
 
 3.24 
 
 -8. 25, sub-s. (1) 
 -(2) (3) and (4) 
 
 „ (5) 
 
 „ (6) 
 
 „ (7) 
 
 3.26 
 
 3.27 
 
 3.28 
 
 - 8. 29, Bub-3. (I) 
 
 - sub-S3. (2) to (6) 
 s. 30 
 
 •3.31 
 
 •s. 32 
 s. 33 
 
 Repealed by 46 & 47 Vict. c. 57, s. 113 
 
 Repealed by 37 i 
 Repealed by 46 ( 
 
 Explained by 48 i 
 Explained by 49 i 
 
 Amended by 51 & 
 Ameiided by 48 & 
 Ameiided by 51 (S 
 Amended by 51 S 
 
 49 Vict. c. 63, s. 5 
 
 3.2 
 
 ; 50 Vict. c. 37, s. 2 
 
 52 Vict, c, 
 : 49 Vict. c. 
 
 52 Vict. c. 
 ; 52 Vict. c. 
 
 Amended 
 
 by 51 & 
 
 52 Vict. 
 
 50, 3. 2 
 63, s. 3 
 
 88.3 
 
 50, 8. 3 
 50, s. 4 
 
 50, 3. 5 
 
 491 
 99 
 
 ;38Vict. c. 96 
 
 : 47 Vict. c. 57, 8. 113 
 
 34, 206 
 34, 410 
 34, 410 
 34, 411, 
 
 560 
 9, 34, 
 
 560 
 1, 35, 557 
 10,35 
 35 
 2 
 38 
 
 148, 557 
 80, 153 
 396 
 2,153 
 205 
 
 559, 373 
 10 
 11 
 77 
 397 
 142 
 98 
 107 
 133 
 139 
 140 
 402 
 79 
 65 
 294 
 299 
 
 324, 330 
 382 
 546 
 116 
 
Ixiv 
 
 Table of Statutes. 
 
 statute. 
 
 46&47Viot. 0. 57, s. 34 
 
 s. 35 
 
 B. 36 
 
 s. 37 
 
 s. 38 
 
 •B. 40 
 ■s. 42 
 ■s. 43 
 ■s. 44 
 -s. 45 
 -s. 46 
 •s. 82 
 -s. 84 
 -s. 85 
 ■s. 86 
 ■s. 87 
 
 -s. 90 
 -s. 91 
 -s. 93 
 -S.94 
 -a. 95 
 ■8.96 
 -8.97 
 -8.98 
 -s. 99 
 
 - B. 101 
 
 - s. 102 
 
 - 8. 103 
 
 - 8. 104 
 -BS.105&106 
 
 - SB. 107, 108. 
 
 109 
 
 -8. 110 
 
 ■ B. 112 
 
 ■ 8. 114 
 
 ■ s. 115 
 
 ■ a. 116 
 
 ■ s. 117 
 
 48 & 49 Tiot. 0. 63, 8. 2 .. 
 
 s. 3 .. 
 
 ■ 8.4 .. 
 
 • -s. 5 .. 
 
 8. C .. 
 
 49 & 50 Vict. c. 37, 8. 2 .. 
 
 8.3 .. 
 
 51 & 52 Vict. c. 50, s. 1 .. 
 B. 2 .. 
 
 -8.3 .. 
 
 -S.4 .. 
 -8. 5 .. 
 ■ 88. 21 to 23 
 • s. 25 
 
 Repealed or Amended. 
 
 Extended by 49 & 50 Vict. c. 37, b. 3 
 
 Amended by 51 & 52 Vict. o. 50, s. 21 
 „ ,, „ 8. 22 
 
 Amended by 51 & 52 Vict. c. 50, 8. 23 
 
 Added to by 51 & 52 Vict. o. 50, 8. 25 
 Amended by 48 & 49 Vict. c. 63, 8. 6 
 
 Page in 
 Digest 
 where 
 cited. 
 
 81, 272 
 
 569 
 
 65 
 
 82 
 
 379 
 
 93 
 
 151, 152 
 
 220 
 
 145 
 
 406 
 
 94 
 
 205, 491 
 
 76 
 
 406 
 
 397 
 
 396 
 
 65. 397 
 397 
 
 75 
 397 
 
 28. 398 
 398 
 
 84 
 
 83 
 
 74 
 
 279 
 
 557 
 
 81 
 
 580 
 
 31,74 
 
 61 
 
 61,75 
 
 268 
 
 405 
 
 205 
 
 205 
 
 398 
 
 581 
 
 79 
 
 76,77 
 
 35,81 
 
 36, 557 
 
 1,36 
 
 36, 206 
 
 61 
 
 84,411 
 
 93 
 
 3 
 
 9,411 
 
 35 
 
 38 
 
 10 
 
 397 
 
 74 
 
DIGEST OF PATENT LAW. 
 
 Abandoned Invention. 
 
 Patents Act, 1883, sect. 8. (1) If the applicant does not leave a complete 
 specification with his application, he may leave it at any subsequent time 
 within nine months from the date of application. 
 
 (2) Unless a complete specification is left within that time the application 
 shall be deemed to be abandoned. 
 
 (This period of nine months may now be extended by one month under 
 Patents Act, 1885, sect. 3, infra, p. 35.) 
 
 By Patents Act, 1885, sect. 4, where an application for a patent has been 
 abandoned, or become void, the specification or specifications and drawings (if 
 any) accompanying or left in connection with such application, shall not at 
 any time be open to public inspection or be published by the comptroller. 
 
 (a) Lewis v. Marling. [1829] 
 
 The abandonment of a part of the invention not suggested as 
 essential virill not vitiate the patent. (1 Web. P. 0. 490.) 
 
 (6) Jones v. Pearce. [1832] 
 
 An experiment abandoned as useless on account of defects is not 
 an anticipation of a similar invention in which the defects are 
 remedied. (1 Wd>. P. G. 122.) 
 
 (c) HousEHiLL Company v. Neilson. [1843] 
 
 An invention which has been publicly used and subsequently- 
 abandoned will invalidate a subsequent patent for a similar 
 invention. (1 Web. P. C. 710.) 
 
 (d) In re Card's Patent. [1848] 
 
 A general knowledge of an invention, if it is abandoned and not 
 carried out, will not invalidate the patent which has perfected it. 
 (6 Moo. P. a a 212.) 
 
 (e) OXLEY V. HOLDEN. [1860] 
 
 A provisional specification abandoned did not become public by 
 abandonment. (30 L. J. G. P. 68 ; 8 G. B., N. S., 666.) 
 
2 ABRIDGMENTS. 
 
 Abridgments. 
 
 Patents Act, 1883, sect. 40 (3). The comptroller shall continue, in such 
 form as he may deem expedient, the indexes and abridp:ments of specifications 
 hitherto published, and shall from time to time prepare and publish such other 
 indexes, abridgments of specifications, catalogues, and other works relating to 
 inventions, as he may see fit. 
 
 Acceptance. 
 
 Patents Act, 1883, sect. 7 (4), amended by Patents Act, 1888, sect. 2 (4). 
 The comptroller shall, when an application has been accepted, give notice 
 thereof to the applicant. 
 
 Sect. 10. On the acceptauce of the complete specification the comptroller 
 shall advertise the accept3,nce ; and the application, and specification or speci- 
 fications with the drawings (if any) shall be open to public inspection. 
 
 Sect. 15. After the acceptance of a complete specification and until the 
 date of sealing a patent in respect thereof, or the expiration of the time for 
 sealing, the applicant shall have the like privileges and rights as if a patent for 
 the invention had been sealed on the date of the acceptance of the complete 
 specification: Provided that an applicant shall not ba entitled to institute 
 any proceeding for infringement unless and until a patent for the invention 
 has been granted to him. 
 
 Si3e also under Application, p. 33 ; and under Specification, p. 408. 
 
 Account of profits. See under Practice Account, pp. 367 to 372. 
 
 Accounts of petitioner for prolongation of patent. See under Extension of 
 Term, pp. 95, sej. 
 
 Acquiescence. See under Practice Injunction, Delay, and Acquiescence, 
 pp. 346 to 349. 
 
 Action. See under Practice. 
 
 Addition to a known machine or process. See under Subject Matter, 
 pp. 518. to 522. , 
 
 Address. 
 
 Patent Bulbs, 1890, 9. The application shall be accomianied by a state- 
 ment of an address to which all notices, requisitions, and communications of 
 every kind may be made by the comptroller or by the Board of Trade, and such 
 statement shall thereafter be binding upon the applicant unless and until a 
 substituted statement of address shall be furnished by him to the comptroller. 
 He may in any particular case reqiiire that the address mentioned in this 
 Bule be in the United Kingdom. 
 
 Administrator of inventor may obtain patent. Patents Act, .1883, sects. 
 12 and 34, p. 81. 
 
 Advertisements on Petition for Extension. See under Extension of 
 Term Petition , p. 98. 
 
 of acceptance of coinplete specification, p. 2. 
 
 of amendment when proposed and when accepted. See under 
 Amendment of Specification, p. 11. " , . 
 
 threatening legal proceedings. See under Threats, p. 545. 
 
 in derogation of grant, 216, {k). 
 
AGENTS. 3 
 
 Affidavits. See Practice— Affidavits, p. 358. 
 
 Agents. 
 
 Begkter of Patent Agents — 
 
 esiablished by 51 & 52 Vict., c. 50, p. 3 
 
 Rules made by Board of Trade as to Register, pp. 3 to 6. 
 
 Ayents generally — 
 
 Rules of 1890 as to, rules 8 and 69, p. 6 
 
 neuligence of, p. 7 (/) 
 
 may petition for extension, p. 7 (i) 
 
 infringement by, pp. 6 (e), 7 (h), 8 (I) (m) 
 
 testing of invention by, is no publication, p. 6 (/) 
 
 merely for sale cannot brina action for infringement, p. 7 (A) 
 
 may sign notice of appeal if autborised, p. 8 («). 
 
 Eegister of Patent Agents. 
 
 Patents Act, 1888, sect. 1. (1) After the 1st day of July, 1889, a person 
 shall not be entitled to describe himself as a patent agent, whether by adver- 
 tisement, by description on his place of business, by any document issued by 
 him, or otherwise, unless he is registered as a patent agent in pursuance of 
 this Act. 
 
 (2) The Board of Trade shall, as soon as may be after the passing of this 
 Act, and may from time to time, make such general rules as are in the opinion 
 of the Board required for giving efifect to this section, and the provisionsof section 
 101 of the principal Act shall apply to all Rules so made, as if they were 
 made in pursuance of that section. 
 
 (3) Provided that every person who proves to the satisfaction of the Board 
 of Trade that prior to the passing of this Act he had been bon^ fide practising 
 as a patent agent shall be entitled to be registered as a patent agent in 
 pursuance of this Act. 
 
 (4) If any person knowingly desoiibes himself as a patent agent in contra- 
 vention of this section he shall be liable on summary conviction to a fine not 
 exceeding twenty pounds. 
 
 (5) In this section " patent agent " means exclusively an agent for obtain- 
 ing patents in the United Kingdom. 
 
 The Rules made in pursuance of this section, dated 11th June, 1889, are 
 published in the Gazette of June 14th, 1889. The most important portions 
 of these are as follows : — 
 
 [Note. — Rules 5 to 7 and 10 to 18 inclusive are given verbatim, but of the 
 remaining rules the effect only is given.] 
 
 Rule 1. A Register shall be kept by the Institute of Patent Agents for the 
 registration of patent agents in pursuance of the Act. 
 
 2. Such Register shall contain in one list aU patent agents who are regisr 
 tered under the Act and these Rules ; such list to be alphabetical and to 
 contain the fuU name and address, date of registration, and such honour.s, 
 memberships, or other additions as the Council of the Institute may think 
 worthy of mention. 
 
 3. A copy of the Register is to be published by the Institute on every 
 31st of January, and is to be admissible as evidence of all matters stated 
 -therein, and the absence of the name of any person from the Register is to be 
 evidence, until the contrary is made to appear, that such person is not regis- 
 tered in pursuance of the Act. 
 
 4. The Institute is to appoint a Registrar who shall keep the Register in 
 accordance with the provisions of the Act and Rules, and subject thereto shall 
 act under the directions of the Institute and the Board of Trade. 
 
 B 2 
 
4 AGENTS. 
 
 5. A person who is desirous of being registered in pursuance of the Act, 
 on the ground that prior to the passing of the Act he had heen bona fide 
 practising as a patent agent, shall produce or transmit to the Board of Trade 
 a statutory riecLiration in the Form 2 in Appendix A ; provided that the 
 Board of Trade may in any case in which they shall think fit, require further 
 or otiier proof that the person had prior to the passing of the Act been bonS, 
 fide practising as a patent agent. Upon the receipt of sucli statutory decla- 
 ration or of such further or other proof to their satisfaction as the case may 
 be, the Board of Trade shall transmit to the Registrar a certificate that the 
 person therein named is entitled to be registered in pursuance of the Act, and 
 the Registrar shall on the receipt of such certificate cause the name of such 
 person to be entered in the Rejiister. 
 
 6. Subject to the provisions of the Act in favour of every person who 
 proves to the satisfaction of the Board of 'I'rade that prior to the passing of 
 the Act he had been bonS, fide practising as a patent agent, no person shall 
 be entitled to be registered as a patent agent unless he has passed, and pro- 
 duces or transmits to the Registrar a certificate under the seal of the Institute 
 that he has passed, such final examination as to his knowledge of patent law 
 and practice and of the duties of a patent agent as the Institute shall from 
 time to time prescribe. 
 
 7. Any person who has been for at least seven consecutive years continu- 
 ously engaged as a pupil or assistant to one or more registered patent agents, 
 and any person for the time being entitled to practise as a Solicitor of the 
 Supreme Court of Judicatuie in England or Ireland, or as a Law Agent 
 before the Court of Session in Scotland, shall be entitled to be registered 
 without passing any examination other than the final examination provided 
 for in the last preceding hiule. The Registrar shall before registering the 
 name of any such person as a patent agent (in addition to the final examina- 
 tion certificate) require proof satisfactory to the Registrar that such person 
 has been for at least seven consecutive years continuously engaged as such 
 pupil or assistant, or is entitled to practise as such Solicitor or Law Agent. 
 
 8. Any person who is not qualified under Rule 7 must, in order to be entitled 
 to present himself for the final qualifying examination, be a person who has 
 passed one of the following examinations, or such other examination as the 
 Institute shall with the approval of the Board of Trade prescribe : 
 
 (1.) The Matriculation Examination at any University in England, Scotland, 
 or Ireland. 
 
 (2.) The Oxford or Cambridge Middle Class Senior Local Examinations. 
 
 (3.) The Examinations of the Civil Service Commissioners for admission to 
 the Civil Service. 
 
 9. The Institute shall hold at least once in the year, commencing July 1st, 
 1889, and in every other succeeding year, a final qualifying examination, 
 which shall be the final qualifying examination under Rules 6 and 7 ; and 
 the Institute shall subject to these Rules have the entire management and 
 control of all snch examinations. 
 
 10. The Registrar shall from time to time insert in the Register any 
 alteration which may come to his knowledge in the name or address of any 
 person registered. 
 
 11. The Registrar shall erase from the Register the name of any registered 
 person who is dead. 
 
 12. The Registrar may erase from the Register the name of any registered 
 person who has ceased to practise as a patent agent, but not (save as herein- 
 after provided) without the consent of that person. For the purposes of this 
 Rule the Registrar may send by po^t to a registered person to his registered 
 address a notice inquiring whether or not he has ceased to practise or has 
 changed his residence, and if the Registrar does not within three months after 
 sending the notice receive an answer thereto from the said person, he may. 
 
AGENTS. 5 
 
 within fourteen days after the expiration of the three months, send him by 
 post to his registered address another notice referring to the first notice, and 
 stating that no answer has been received by the Registrar ; and if the 
 Kegistrar either before the second notice is sent receives the first notice back , 
 from the Dead Letter Office of the Postmaster-General, or receives the second 
 notice back from that office, or does not within thiee months after sending 
 the second notice receive any answer thereto from the said person, that 
 person shall, for the pm-poses of this Eule, be deumed to have ceased to 
 practise, and his name may be erased accurdingly. 
 
 13. If any registered person shall not, within one month from the day on 
 which his annual registration fee becomes payable, pay such fee, the Eegistrar 
 may send to such registered person to his registered address a notice requiring 
 him, on or before a day to be named in the notice, to pay his annual registra- 
 tion fee; and if such registered patent agent shall not within one month 
 from the day named in such notice pay the registration fee so due irom him, 
 the Eegistrar may erase bis name from the Eegister : Provided that the name 
 of a person erased from the Register under this rule may be restored to the 
 Eegister by direction of the Institute or the Board of Trade on payment by 
 such person of the fee or fees due from him, together with such further sum 
 of money, not exceeding in amotmt the annual registration fee, as the Institute 
 or the Board of Trade (as the case may be) may in each particular case direct. 
 
 14. In the execution of his duties the Eegistrar shall, subject to these 
 Eules, in each case act on such evidence as appears to him sufficient. 
 
 15. The Board of Trade may order the Eegistrar to erase from the Eegister 
 any entry therein which is proved to their satisfaction to have been in- 
 correctly or fraudulently inserted. 
 
 16. If any registered person shall be convicted in Her Majesty's dominions 
 or elsewhere of an offence which, if committed in England, would be a felony 
 or misdemeanour, or after due inquiry, is proved to the satisfaction of the 
 Board of Trade to have been guilty of disgraceful professional conduct, or 
 having been entitled to practise as a Solicitor or Law Agent shall have 
 ceased to be so entitled, the Board of Trade may order the Eegistrar to erase 
 from the Eegister the name of such person. Provided that no person shall 
 be adjudged by the Board of Trade to have been guilty of disgraceful 
 professional conduct unless such person has received notice of, and had an 
 opportunity of defending himself from, any charge brought against him. 
 
 17. — (1.) Where the Board of Trade direct the erasure from the Eegister 
 of a name of any person, or of any other entry, the name of the person or the 
 entry shaU. not be again entered in the Eegister, except by order of the Board 
 of Trade. 
 
 (2.) The Board of Trade may in any case in which they think fit restore to 
 the Eegister any name or entry erased therefrom either without fee, or on 
 payment of such fee, not exceeding the registration fee, as the Board of 
 Trade may from time to time fix, and the Eegistrar shall restore the name 
 accordingly. 
 
 (3.) The name of any person erased from the Eegistei at the request or 
 with the consent of such person shall, unless it might, if not so erased, have 
 been erased by order of the Board of Trade, be restored to the Eegister by the 
 Eegistrar on his application and on payment of such fee, not exceeding the 
 registration fee, as the Institute shall from time to time fix. 
 
 18. For the purpose of exercising in any case the powers of erasing from 
 and of restoring to the Eegister the name of a person, or an entry, the Board 
 of Trade may appoint a committee consisting of such persons as they shall 
 think fit. Every application to the Board of Trade for the erasure from, or 
 restoration to, the Ee^jister of the name of any patent agent shall be referred 
 for hearing and inquiry to the committee, who shall report thereon to the 
 Board of Trade, and a report of the committee shall be conclusive as to the 
 
6' AGENTS. 
 
 ftcts for the purpose of the exercise of the feaid powers by the Board of 
 Trade. 
 
 19. Any person aggrieved by any order, direction, or refusal of the Institute 
 or Kegistrar, may appeal to the Board of Trade. 
 
 20. Such person shall, within fourteen days from the date of making or 
 giving of the order, direction, or refusal complained of, leave at the office of 
 the Institute, a notice in writing, signed by him, of his intention to appeal. 
 
 ' 21. Such notice is to be accompanied by a statement in writing of the 
 grounds of the appeal, and of the case of the appellant in support thereof. 
 
 22. The appellant shall, immediately after leaving such notice, send by post 
 a copy of such notice, with a copy of the case in support thereof, to the 
 Secretary of the Board of Trade, 7, Whitehall Gardens, London. 
 
 23. The Board of Trade may thereupon give such directions, if any, as they 
 may think fit as to hearing the appeal. 
 
 24. Seven days' notice, or such shorter notice as the Board may direct, 
 shall be given to the appellant, and the Institute, and the Registrar, of the 
 time and place of the hearing. 
 
 25. The appeal may be heard by the President, or Secretary, or an Assistant 
 Secretary of the Board of Trade. 
 
 26. The following fees are to be paid to the Registrar : — 
 
 For registration of name £5 5 
 
 Annual fee to be paid by every registered patent 
 agent on or before November 30th of each year in 
 respect of the year commencing January 1st 
 
 following £3 3 
 
 On entry of candidate for final qualifying ex- 
 amination £2 2 
 
 Agents generally. 
 
 Patent Rules, 1890. Rule 8. An appUcation for a patent must be signed 
 by the applicant, but all other communications between the applicant and 
 the comptroller and all attendances by the applicant upon the comptroller 
 may be made by or through an agent duly authorised to the satisfaction of 
 the comptroller, and, if he so require resident in the United Kingdom. 
 
 Rule 69. (A request for entry of subsequent proprietorship in the Register) 
 shall in the case of individuals be made and signed by the person requiring to 
 be registered as proprietor, or by his agent duly authorised to the satisfaction 
 of the comptroller, and in the case of a body corporate by their agent, 
 authorised in like manner. 
 
 (e) Gibson v. Brahd. [1842] 
 
 He who causes and procures to be made articles wHcli are 
 infringements is himself guilty of infringement. (1 Weh. 
 P. G. 631.) 
 
 (/) Bentley v. Fleming. [1844] 
 
 The testing of an invention hy an agent is no publication. 
 (1 G. & K. b?>'l.) 
 
 (g) Steedman v. Maesh. [1856] 
 
 (See Milligan v. Marsh, 2 Jur. N. S. 1083). Wood, V.-C. : If thd 
 defendant had been Milligan's agent, and had availed himself of 
 that capacity to wrong Milligan, the Court would probably have 
 held him a trustee for any use he chose to make for his own 
 
AGENTS., T' 
 
 benefit of tbe property so entrusted to Mm as general agent. 
 (2Jur.,N.S., 391.) ,,;\. , -, 
 
 (A) Wheatstone v. Wild. [1861] 
 
 Wood, V.-C. : A person who endeavours to place himself in the 
 position of an agent to a patentee, and afterwards infringes his: 
 patent, is in a different position from a mere ordinary manu-i 
 faoturer who- says, " I have a right, as a rival manufacturer, to 
 avail myself of a flaw in your patent, or of a distinction between; 
 my patent and yours." The position of an agent is different, for 
 whatever information he has gained is acquired confidentially; and' 
 there is a prima facie presumption against his coming into the 
 field as a fair competitor against the person who originally 
 obtained the patent. {Griff. 247.) 
 
 (*) Jw j-e Newton's Patent. [1861] 
 
 Extension granted to a petitioner who had obtained the letters 
 patent as agent and trustee for a foreign inventor. (14 Moo.' 
 P. G. a 156.) 
 
 0') Lee v. Walker. [1872] 
 
 On the 28th of April, 1870, the plaintiffs retained the defendant,' 
 a patent agent, to obtain for them letters patent for " a new 
 automatic vase or depot for holding coals," and on the 30th a 
 provisional specification was filed. Nothing more was done by 
 the defendant until the end of August, when he gave notice of his 
 intention to proceed with the patent, pursuant t6 sect. 12 of 
 15 & 16 Vict. c. 83 ; and in October he applied for the fiat of the 
 Attorney-General for sealing the patent. . ' 
 
 In the meantime, viz., on the 15th of June, 1870, one P. had, 
 as the defendant was aware, filed a provi^ional specification for 
 "improvements in coal vases," substantially the same as the 
 plaintiff's invention, and had, on the 10th of September, obtained 
 a grant. _ ^ 
 
 The Attorney-General rejected the plaintiffs' application, upon 
 the authority of the decision in Ex parte Bates, of which, though 
 pronounced in May, 1869, the defendant was ignorant :—JEfeMi 
 that there was evidence of negligence on the part of the defendant. 
 (L. B., 7 0. P. 121.) 
 
 (F) Adams «. Noeth British Eailway Company. [1873] 
 
 To a bill stating an agreement made between a general agent of 
 the -patentees of an Americah invention to introduce and sell the 
 invention in Great Britain and the plaintiff, whereby the plaihtiff 
 was to have the sole agency and control of the working of the 
 patent in England upon certain terms, including a share o? 
 royalties and profits, praying for an account for damages, and an 
 injunction to restrain future infringements, the defendants, who 
 were alleged to be using the invention, demurred : — Eeld, tha,t the 
 plaintiff was a mere agent for the sale of the invention, and was in 
 no such position as gave him the right to file such a bill, which 
 
8 ALTEEATION. 
 
 ■was in the form of a patentee's bill for infringement, (29 L. T. 
 Sep., N. S., 367.) 
 
 (I) TOWNSEND V. Ha WORTH. [1875] 
 
 A. does not infringe a patent for tte use of well-known chemical 
 substances in a Specified manner by selling the known chemical 
 Bubstances to B. with knowledge that B. intends to use them in 
 infringement of the patent, the •validity of which he disputes. 
 (L. B., 12 Ch. D. 831 (w.), and v. inf., p. 165 (m).) 
 
 (m) Baillie v. Goodwin & Co. [1886] 
 
 An action was instituted against the defendants, who were 
 resident in Scotland, for infringement of a patent for improvements 
 in stamping corrugated plates. The defendants employed one Mac- 
 phail.who had offices at 20, Bucklorsbury, as their agent, and, as 
 they alleged for convenience, the defendants' firm's name was affixed 
 to these offices, and the firm's letter paper was headed " London 
 Office, 20, Bucklersbury, Mansion House, E.G." The writ was served 
 on Maophail, and the defendants moved to set aside service on the 
 ground that Macphail had no authority to take orders for the 
 defendants, and that the defendants did not manufacture, sell, or 
 exhibit goods at Macphail's offices, and that their business was not 
 managed or directed by him : — Held, that Macphail was only an 
 agent and not a servant of the defendants, and that the service 
 must be set aside. (3 0. B. 283.) 
 
 (n) Anderson and McKinnell's Application. [1887] 
 
 An agent duly authorised may sign a notice of appeal from the 
 comptroller to the law officer. (2 Griff. 23.) 
 
 Alteration. See Amendment. 
 
 Ambiguity in Specification. See Specification, Complete, Ambiguity in, 
 pp. 436 to 445. 
 
 (o) Campion v. Benyon. [1821] 
 
 If there be any ambiguity, either in the patent itself or in the 
 specification in any material point, it is of itself a ground for 
 rendering the patent absolutely void. (6 B. Mo. 71; 3 5. <£ jB. 5.) 
 
 (y) Neilson v. Harford. [1841] 
 
 Where the title was ambiguous, but was sufficiently explained 
 by the specification, and was not at variance with it, held that 
 such ambiguity was not fatal. (8 M. & W. 806; 1 TTefe. 
 P. G. 331.) 
 
 Amendment. 
 
 Amemd/ment generally — 
 
 Patents Act, 1883. Sects. 7, 9, 18, 19, 20, 21. Eules 52 to 59, pp. 9 
 
 toll 
 conditions annexed to, p. 12 (r) 
 
 should not include knowledge acquired subsequently, 12 (s) 
 under Act of 1883 will date from Jan. 1st, 1884, 11 (y), 12 (r). 
 
AMENDMENT. 9 
 
 Amendment hy Disclaimer — 
 
 patentee who has assigned may enter disclaimer, p. .1 2 (t) 
 
 amendment by disclaimer asked for before the grant, p. 13 («/) 
 
 whatsis a pending action within sect. 18, sub-sect. 10, pp. 12 (w), 13 (a) 
 (6), 14 (c) (/) ' ^^ ^ ^' ^' 
 
 amendment not in accordance with advertisement, p. 14 (jg) 
 
 cannot be opposed by one of the public on ground of prior patent, p. 14 {d) 
 
 must not unjustifiably impute want of novelty to prior patent, p. 14 (e). 
 Amendment hy Disclaimer, when allowed, and on what terms — 
 
 invalidity of patent, 15 (*) (y) 
 
 want of novelty in part, 15 (m) 
 
 materiality in part, 15 (J) (m) 
 
 extension of exclusive right, pp. 15 (k) (Z), 17 (r), 24 (t) 
 
 creation of a new liability, p. 15 (m) 
 
 reasons for entering, pp. 16 (o), 24 (y) 
 
 removal of all claiming clauses, p. 17 (s) 
 
 verbal alterations, p. 17 (s) 
 
 should appear on face of specification, p. 16 (n) 
 
 amendments which would make the invention substantially different not 
 allowed, pp. 16 (j), 17 (r) (t), 18 (m) (w), 19 (k) 
 
 but should be allowed when there is a doubt, pp. 16 (re), 18 (u). 
 Terms imposed — 
 
 discretion of judge as to, is unfettered, pp. 21 (d), 22 («) 
 
 when leave given pending action, pp. 20 (y) (a) (6), 21 (e) (e^) (/), 
 22 (g) (,h) (i) 
 
 when no action is pending, pp. 19 (a;) (u), 21 (c) (d), 23 (2). 
 Operation of — 
 
 becomes part of patent, pp. 22 (T) (m), 23 (0) 
 
 does not import invalidity of patent, p. 23 (n) 
 
 on infringements prior to, pp. 22 (I), 23 (n) (0) ( p) 
 
 not explanatory of specification, p. 23 (r) 
 
 introductory sentences, p. 24 (•«) 
 
 reasons for entering, p. 16 (0), 24 (v) 
 
 is an irrevocable surrender of the part disclaimed, p. 25 (2) 
 
 is a nullity if it makes the patent substantially larger, p. 27 (/) 
 
 effect of terms imposed as condition for allowing amendment on stock 
 in hand, p. 26 (a) (6) (c). 
 Practice — 
 
 Comptroller-General as a rule shouldneither give nor receive costs, p. 28 (l). 
 Amendment of clerical errors — 
 
 Patents Act, 1883, sect. 91 : Eules 16 and 59, p. 28. 
 Amendment of Particulars of Breaches, p. 319 (w) 
 
 Particulars of Objections, pp. 305 (s) (*), 306 (v) (w) (x) 
 
 Petition for Extension, p. 104 (a). 
 
 Amendment generally. 
 
 Patent Act, 1883, sect. 7, amended by Patents Act, 1888, sect. 2. 
 For sect. 7 of the principal Act the following section shall be substituted : 
 7. — (1.) If the examiner reports that the nature of the invention is not 
 fairly de-scribed, or that the application, specification, or drawings has not, or 
 have not, been prepared in the prescribed manner, or that the title does not 
 sufficiently indicate the subject matter of the invention, the comptroller may 
 refuse to accept the application, or require that the application, specification, 
 or drawings be amended before he proceeds with the application ; and in the 
 latter case the application shall, if the comptroller so directs, bear date as 
 from the time when the requirement is complied with. 
 
10 AMENDMENT. 
 
 (2.) Where the comptroller refuses to accept an application or requires 
 an amendment,' the applicant may appeal from his decision to the law 
 officer. ' 
 
 (3.) The law officer shall, if required, hear the applicant and ' the 
 comptroller, and may make an order determining whether, and subject to 
 what conditions (if any) the application shall be accepted. 
 
 [For sub-sects. (4) (5), see p. 35.] 
 
 By Patents Act, 1883, sect. 9, (1) amended by Patents Act, ]885, 
 sects. 3, 4. "Where a , complete specification is left after a provisional 
 specification, the comptroller shall refer both specifications to an examiner 
 for the purpose of ascertaining whether the complete specification has been 
 prepared in the prescribed manner, and whether the invention particularly 
 described in the complete specification is substantially the same as that 
 which is described iu the provisional specification. 
 
 (2.) If the examiner reports that the .coTiditions hereinbefore contained 
 have not been complied with, the comptroller may refuse to accept the 
 complete specification uuless and until the same shall have been amended to 
 his satisfaction; but any such refusal shall Tae subject to appeal to the law 
 officer. 
 
 (3.) The law officer shall, if required, hear the applicant and the comptroller, 
 and may, make an order determining whether and subject to what conditions, 
 if any, the complete specification shall be accepted. 
 
 [For sub-sects. (4) and (5), see p. 35.] 
 
 '. Patents Act, 1883, sect. 18, amended by 51 & 52 Vict. c. 50, sect. 5. 
 (1.) An applicant or a patentee may, from time to time, by request in writing 
 left at the Patent Office, seek leave to amend his specification, including drajv- 
 ings forming part thereof, by way of disclaimer, correction, or explanation, 
 stating the nature of such amendment and his reasons for the same. 
 
 (2.) The request and the nature of such proposed amendment shall be 
 advertised in the prescribed maimer, and at any time within one month from 
 its first advertisement any person may give notice at the Patent Office of 
 opposition to the amendment. 
 
 (3.) Where such notice is given the comptroller shall give notice of the 
 opposition to the person making the request, and shall hear and decide the 
 case subject to an appeal to the law officer. 
 
 (4.) The law officer shall, if required, hear the person making the request 
 and the person so giving notice, and being in the opinion of tlie law officer 
 entitled to be heard in opposition to the request, and shall determine 
 whether and subject to what conditions, if any, the amendment ought to be 
 allowed. 
 
 (5.) Where no notice of opposition is given, or the person so giving notice 
 does not appear, the comptroller shall determine whether and subject to 
 what conditions, if any, the amendmetit ought to be allowed. 
 
 (6.) When leave to amend is refused by the comptroller, the person 
 making the request may appeal frorn his decision to the law officer. 
 
 (7.) The law officer shall, if required, hear the person making the request 
 and the comptroller, and may make an order determining whether, and 
 subject to what conditions, if any, the amendment ought to be allowed. 
 
 (8.) No amendment shall be allowed that would make the specification, 
 as amended, claim an inventioii substantially larger tlian or substantially 
 different from the invention claimed by the specification as it stood before 
 amendment. 
 
 (9.) Ltave to amend shall be conclusive as to the right of the party to 
 taake the amendment allowed, except in case of fraud ; and the amendment 
 shall in all courts and for all purposes be deemed to form part of'the 
 specification. ' 
 
AMENDMENT. 11 
 
 (10.) The foregoing provisions of this section do not iapply when and so 
 long as, any action for infringement or proceeding for revocation of a jjatent 
 is pending. 
 
 19. (1.) In an action for infringement of a patent, and in a proceeding for 
 revocation of a patent, the Court or a judge may at any time order that the 
 patentee shall, suhject to such terms as to costs and otherwise as the Court 
 or a judge may impose, he at liherty to apply at the Patent Office for leave 
 to amend his specification by way of disclaimer, and may direct that in the 
 meantime the trial or hearing of the action shall be postponed. 
 
 20. Where an amendment by way of disclaimer, correction, or explanation, 
 has been allowed under this Act, no damages shall be given in any action in 
 respect of the use of the invention before the disclaimer, correction, or 
 explanation, unless the patentee establislies to the satisfaction of the Court' 
 that his original claim was framed in good faith and with reasonable skill 
 aud knowledge. 
 
 21. Every amendment of a specification shall he advertised in the 
 prescribed manner. 
 
 Patent Rules, 1890, 52. A request for leave to amend a specification 
 must be signed by the applicant or patentee, hereinafter in Kules 54, 55, 
 and 58 called the applicant, and accompanied by a duly certified printed 
 copy of the original specification and drawings, showing in red inlc the pro- 
 posed amendment, and shall be advei-tised by publication of the request and 
 the nature of the proposed amendment in the official jovurnal of the Patent 
 Office, and in such other manner (if any) as the comptroller may in each case 
 direct. 
 
 53. A notice of opposition to the amendment shall state the ground or' 
 grounds on which the person giving such notice (hereinafter called the 
 opponent) intends to oppose the amendment, and must be signed by him. 
 Such notice shall state his address for service in the United Kingdom, and 
 shall be accompanied by an unstamped copy. 
 
 54. On receipt of such notice the copy thereof shall be transmitted by 
 the comptroller to the applicant. 
 
 55. Within fourteen days after the expiration of one month from the first 
 advertisement of the application for leave to amend, the opponent may leave. 
 at the Patent Office statutory declarations in support of his opposition and 
 on so leaving shall deliver to the applicant a list thereof. 
 
 56. Upon such declarations being left, and such list being delivered, the 
 provisions of Rules 38, 39, 40, 41, and 44 shall apply to the case, and the 
 further proceedings therein shall be regulated in accordance with such pro- 
 visions as if they were here repeated. 
 
 57. 'Where leave to amend is given the applicant shall, if the comptroller 
 so require, and within a time to be limited by him, leave at the Patent Offic'd 
 a new specification and drawings as amended, to be prepared in accordance 
 with Rules 10, 30, and 31. 
 
 58. Where a request for leave to amend is made by or in pursuance of an 
 order of the Court or a judge, an official or verified copy of the order shall be' 
 left with the request at the Patent Office. 
 
 59. Every amendment of a specification shall be forthwith advertised by' 
 the comptroller in the official journal of the Patent Office, and in such other 
 manner (if any) as the comptroller may direct. 
 
 (q) Haddan's Patent. [1885] 
 
 In the absence of special circumstances, the amendment of a/ 
 patent of earlier date will date from the 1st of January, 1884. 
 (2 Griff. 12.) 
 
12 AMENDMENT : 
 
 (»•) Ashworth's Patent. [1886] 
 
 In settling the conditions to be annexed to an amendment, the 
 law officer would consider it a special circumstance if the patent 
 had been used for the purpose of endeavouring to obtain a 
 monopoly larger than that which the specification as amended 
 claims. If there is no special circumstance, the law officer will 
 not deprive the patentee of the right which he has according to 
 the settled rule of suing in respect of matters before the amend- 
 ment, but after the 1st of January, 1884. (2 Griff. 6.) 
 
 (s) Beck and Justice's Patent. [1886] 
 
 An unopposed application to amend a specification of a patent 
 for improvements in nozzles, for the escape of steam or gases under 
 pressure, was refused as to an amendment which referred to the 
 exhaust of gas engines, as these had not been mentioned in the 
 original patent. Webster, A. Gr. : " The function of an explanation 
 within sect. 18 is to explain more clearly what is necessary to 
 understand the meaning of the patentee at the time he patented 
 the invention. I do not think it is intended that he should put in 
 subsequently ascertained knowledge." (2 Chriff. 10.) 
 
 Amendment hy Disclaimer. 
 
 (f) Spilsbory v. Clough. [1842] 
 
 A grantee of letters patent, though having entirely parted with 
 his interest, may enter a disclaimer. (2 Oale & Bav. 17 ; 6 Jur. 
 679 ; 2Q.B. 466 ; 1 Web. P. 0. 255.) 
 
 (m) Wallington v. Dale. [1852] 
 
 A grantee had assigned his letters patent before the expiration 
 of the six months within which the specification was to be filed, 
 and after this assignment disclaimed part of the title of the letters 
 patent : — Held, that the disclaimer was valid as soon as it was 
 entered of record. (7 Exch. ?88 ; 23 L. J. Ex. 49.) 
 
 (v) In re Gare's Patent. [1884] 
 
 The 18th section of the Act of 1883 does not affect the jurisdic- 
 tion of the Master of the EoUs, to allow an amendment in a patent 
 specification which has been filed under sects. 27 and 28 of the 
 Patents Act of 1852, or has otherwise become a record. So long 
 as it is in the Patent Office, and before the patent is sealed, anyone 
 applying for amendment must proceed under sect. 18 of the Act 
 of 1883. (26 Ch. D. 105 ; Griff. 309.) 
 
 (w) Code's Patent. [1884] 
 
 At the time when the patentee applied for leave to amend, there 
 were two actions pending in respect of the patent, and in only one 
 of these had leave to apply been obtained from the Court under 
 sect. 19 : — Meld by the Comptroller-General, that leave must also 
 be obtained in the second action. {Griff. 305.) 
 
By Disclaimer and Memorandum of Alteration. 13 
 
 (x) Winter v. Baybut. [1884] 
 
 An action for infringement having lieen commenced in the 
 Palatine Court and the pleadings having been closed, the plaintiffs 
 applied to the Yice-Chancellor for liberty to apply under sect. 19 
 for leave to disclaim. The Vice-Chancellor being of opinion that 
 the words, the Court or a judge, must mean a judge having 
 power to try for infringement, held that he had jurisdiction to 
 give liberty to apply, and gave liberty on the terms, that the 
 plaintiffs should pay all the costs of the action up to date. (1 
 O. B. 77.) 
 
 Hut now see Proctor v. Sutton Lodge Ghemical Company. (5 0. B. 
 184.) The Palatine Court is not " a Court or a judge" within 
 the meaning of the Patents Act, 1883. See p. 392 (y). 
 
 (jf) JoKEs's Patent. 
 
 Sect. 18 was intended to apply to the amendment of specifica- 
 tions after they had become public property ; any other amend- 
 ments must be dealt with under sects. 7 and 9. {Griff. 313.) 
 
 («) Dart's Patent. 
 
 The Comptroller-General has power under sect. 7 (1) to order 
 an amendment of the title in the application, if in his opinion the 
 title does not sufBciently indicate the invention described in the 
 provisional specification ; but if the applicant merely desires to 
 omit part of the invention described in the original title and 
 provisional specification, he may do so without amendment by a 
 proper disclaiming clause in his complete specification, or may 
 lodge a complete specification omitting the part desired to be left 
 out, and the Patent OfGce may permit the original application and 
 provisional specification to be amended accordingly, provided the 
 amendment is confined to excision only. ( Griff. 307.) 
 
 (a) Singer v. Hasson. [1884] 
 
 Sect. 19 applies to an action for infringement, which was 
 pending at the passing of the Act, and the Court has power in 
 such an action to give the plaintiff liberty to apply for leave to 
 amend. (50 L. T. 32d.) 
 
 (6) Cropper v. Smith (No. 2). [1884] 
 
 In an action for infringement of a patent, the plaintiffs obtained 
 a judgment against the defendants, S. and H. ; but on appeal that 
 judgment was reversed against S., but upheld against H. The 
 plaintiffs afterwards applied, under sect. 18 of the Act of 1883, to 
 amend their specification by way of disclaimer. Subsequently H. 
 appealed to the House of Lords against the decision of the Court 
 of Appeal. The Comptroller-General declined to proceed with 
 the plaintiffs' application, which was opposed until the opinion of 
 the Court had been taken under sect. 19, as to whether the appeal 
 to the House of Lords was a pending litigation within sect. 18, 
 sab-s. 10, and the plaintiffs took out a summons that they might be 
 
14 AMENDMENT : 
 
 at liberty to disclaim : — Held tbat the words, " other legal proceed- 
 ings in relation to a patent," in sect. 18, subs. 10, refer to a 
 proceeding for the revocation of a patent, and that an "action for 
 infringement . . . pending " means an action before judgment and 
 the summons was dismissed.^ (28 Ch. D. 148.) 
 
 (c) Cochrane's Patent. [1885] 
 
 An applicant lor the grant of a patent which was opposed 
 applied foi- leave to amend : —Held by the Comptroller-General that 
 the application for leave to amend should be heard before the 
 application for the grant, and that the latter was not a " legal 
 proceeding " within the terins of sect. 18, subs. 10 : — Held, further, 
 by the law officer that the amendment asked for should be allowed, 
 the effect being to confine the invention to a particular class of 
 slag boxes, which was included with others in the previous claim. 
 (Griff. 304.) 
 
 {d) Bell's Patent. [1887] 
 
 It is not ■competent for a member of the public to set up as a 
 ground of opposition to a proposed amendment, that the patent as 
 amended would still be for substantially the "same invention as 
 that described in a prior patent. (2 Griff. 10.) 
 
 (e) Hampton & Pacee's Patent. [1887] 
 
 A disclaimer cannot be permitted which imputes to former 
 similar patents a want of novelty which is not proved to exist, 
 (2 Griff 13.) 
 
 (/) IjireHALL. [1888] 
 
 An action having been commenced, under sect. 32 of the Patents 
 Act,. 1883, for an injunction to restrain patentees from issuing 
 threats, the patentees brought a cross action for infringement. 
 The patentees then applied in the cross action, and obtained leave 
 from Kay, J'., under sect. 19, to apply to the Comptroller-General 
 for leave to amend their specification by way of disclaimer. Upon 
 an application for a writ of prohibition to the Comptroller-General, 
 %o prevent him from hearing the application, on the ground that 
 there was " a legal proceeding in relation to the patent pending "; 
 within the meaning of sub-s. 10 of sect. 18 : — Held, that Kay, J. 
 had jurisdiction to make the order, and the prohibition was 
 refused. 
 
 It is clear that the procedure under sect. 18 is meant to apply 
 to cases when leave is given by a judge under sect. 19, and a 
 judge has power to give such leave in one legal proceeding, 
 although there may be other legal proceedings pending. (21 Q. B. 
 B. 141 ; bO.B. SOB.) 
 
 {g) Eeg. v. Attoenet-General. [1888] 
 
 An application for a rule nisi, for a prohibition to prevent the 
 Attorney-General proceeding with an application under sect. 18 
 
 > See now 51 & 52 Vict. c. 50. s. 5. 
 
By Disclaimer when Allowed and on what Terms. 15 
 
 of the Act of 1883, was made oil two grounds : (1) That the amend- 
 ment, which was about to be allowed, would' extend the grant in 
 the patent ; and thw decision would be conclusive without any 
 right of appeal, and thereon the rule was refused. (2) That the 
 amendment asked for was not in accordance with the advertisement, 
 and thereon the rule nisi was allowed. (T. Z. Bep., IV., 489.) 
 
 (h) Ex parte Smos. [1888] 
 
 This wa^ an appeal from the first part of the decision in Beg. v. 
 Attorney-General, and the Court of Appeal agreed with the 
 Divisional Court that a prohibition should not go. If the 
 Attorney-General allowed an amendment which made the patent 
 substantially larger, or substantially different, such amendment is 
 a nullity. The Attorney-General, acting under sect. 18, is not a, 
 " Court," and no prohibition will lie to him. (T. L. B,, IV., 764.) 
 
 Amendment by Disclaimer, when allowed and on what terms. 
 
 (i) In re Derosne's Patent. [1835] 
 
 A disclaimer may be made after judgment of a court of law 
 adverse to the validity of the patent. (1 Oarp. P. G. 698.) 
 
 (y) Morgan v. Seaward. [1838] 
 
 A patentee may disclaim a part of his invention after verdict 
 adverse to the validity of a patent, and thus preserve the new* 
 and useful parts of the patent. (2 Carp. P. 0. 104.) 
 
 (¥) In re Sharp's Patent. [1840] 
 
 If the memorandum goes beyond the Act (5 & (5 Will. 4, c. 83) 
 it is void, and cannot be given in evidence or made any use of. (1 
 1^66. P. a 643.) 
 
 (Z) E. V. Wheeler. Sci. fac. [IS 50] 
 
 Maule, J. : " The spirit of the Act (6 & 6 Will. 4, c. 83) seems 
 to be this — that, where there are objections that go only to 
 a small and insignificant part of a patent, which, if sustained, 
 would defeat it altogether, the patentee may relieve himself 
 from the difficulty by a disclaimer." (10 G. B. 396 ; 20 L. J. 
 G. P. 16.) 
 
 (m) Eeg. v. Mill, [1851] 
 
 Eorailly, M.E. : " The power to disclaim given by Lord 
 . ^Brougham's Act (5 & 6 Will. 4, o. 83) is very valuable, and of 
 great importance to patentees; but it is a power which, if 
 indiscriminately exercised, would work considerable injustice to 
 the public. In many cases a person may make an invention, some 
 part of which may be comprised in another patent, which he may 
 be advised is wholly invalid, and yet, by the effect of a subsequent 
 disclaimer, it may become perfectly good, and a liability created 
 which did not previoilsly exist. It is very desirable to afford 
 protection to patentees in consequence of the difficulties arising 
 
16 AMENDMENT : 
 
 from the nature of the subject and the state of the law. It ia 
 proper they should be allowed to correct errors in their patents by- 
 removing from the specification parts which are not material or sub- 
 stantial, or which they have since discovered not to be new 
 inventions ; but this power ought to be exercised with great care 
 and discretion." (14 Beav. 315.) 
 
 (n) In re Bateman & Moore's Patent. [1854] 
 
 Where there was some evidence, upon the face of the speci- 
 fication, that the patentees intended their invention to comprise 
 an entire apparatus, but at the end of the specification they 
 claimed the several parts of the apparatus, Bethell, S. Gr., allowed 
 a disclaimer, the effect of which was to convert the claim into one 
 for the combination. 
 
 Upon an application for a disclaimer, the matter must be 
 decided on the words of the specification itself, irrespective of 
 extraneous considerations. 
 
 In cases of doubt a disclaimer should be allowed, as the refusal 
 of the law officer to grant the application is final and irrevocable, 
 and may be of serious consequence to the patentee ; whereas, if he 
 wrongly grant his fiat so as to extend the claim of the invention, 
 the public will not be injured, as the disclaimer will be void. 
 {Macr. P. G. 116.) 
 
 (o) In re Lucas's Patent. [1854] 
 
 No disclaimer can be allowed without a statement of a reason 
 for entering it. (Macr. P. G. 235.) 
 
 (p) LisTEE V. Leather. [1858] 
 
 Those matters which manifestly form no part of an invention 
 need not be disclaimed. (8 El. & B. 1084.) 
 
 {q) FoxwELL V. BosTOCK. Ch. [1864] 
 
 Where, by the operation of a disclaimer, a combination of 
 machinery, described in an amended specification, is different 
 from the combination of machinery described in the original 
 specification, and for which the patent was granted; Qusere, 
 whether the patent is void, or the disclaimer void ? Where tte 
 amount by which the disclaimer exceeds the statutory requii'e- 
 ments as to its nature can be easily distinguished, the disclaimer 
 is inoperative for snch excess. 
 
 Semble: where the combination of machinery in an amended, 
 specification was different from the combination in the original 
 specification, and no specification remained of the invention for 
 which the patent was granted ; and where, the combination being 
 claimed as the invention, it was only so far ascertained by the 
 specification, that the latter referred to certain drawings and their 
 description, which did but describe an entire machine and the 
 composition and working of its several constituent parts, without 
 in any manner indicating where the improvement lay or in what 
 
By Disclaimer when Allowed cmd on what Terms. 17 
 
 it consisted : — Held, that the patent was void at law. (4 Be Q., 
 J. & S. 298 ; 10 L. T., N. S., 144 ; 12 W. B. 723.) 
 
 (r) Salston v. Smith. H. L. [1865] 
 
 The object of the 5 & 6 Will. 4, c. 83, was only to permit a 
 disclaimer to amend the specification of a patent, by removing 
 from it something superfluous, but not to allow the introduction of 
 that which would convert a description, in itself unintelligible or 
 impracticable, into a practicable description of a useful invention. 
 
 E. took out a patent for " improvements in embossing and 
 finishing woven fabrics, and in the machinery and apparatus 
 employed therein." 
 
 Lord Chelmsford said : " The word ' extend,' in the 5 & 6 
 Will. 4, c. 83, cannot be used only in its ordinary sense of ' adding . 
 to ' or ' enlarging,' because the exact meaning of the term ' dis- 
 claimer,' to w^hich it is applied, is the renunciation of some previous 
 claim actually or apparently made or supposed to be made. It 
 must therefore be intended to comprehend a case where the dis- 
 claimer would give the patentee a right which he could not have 
 enjoyed under the specification as originally formed. Here the 
 specification was conceived in general terms, embracing an infinite 
 variety of modes of indenting upon all descriptions of rollers any 
 desired design. The plain tiif afterwards discovered that no other 
 rollers but those which had circular grooves, flutings or indenta- 
 tions around their surfaces would answer; and he therefore, by 
 his disclaimer, limited his invention to this description of rollers 
 only. . . . By so doing, though in one sense he may be said to 
 narrow a right, yet he really extends it, because he thereby 
 describes his alleged invention sufiiciently to enable him now to 
 assert a right under the patent which he never could have success- 
 fully maintained upon the original specification alone." (11 H. L. 
 Cas. 223 ; 75 L. J. G. P. 49 ; 13 L. T. Bep., N. S., 1 ; 20 G. B., N. S., 
 28.) 
 
 (s) Thomas v. Welch. [1866] 
 
 All the claiming clauses may be struck out of the specification 
 of a patent by a disclaimer if there remain in the body of the 
 specification words sufficiently distinguishing what the invention 
 is which the patentee claims. 
 
 An alteration, verbal merely and not substantive, by means of a 
 disclaimer will not make a patent void. (i. B., 1 G. P. 192 ; 
 12 Jur., N. S., 316 ; 35 L. J. G. P. 200.) 
 
 (f) Heath and Frost's Patent. [1886] 
 
 The patent was for an improved method of blasting, the charge, 
 preferably dynamite, being enclosed in a case surrounded by a water- 
 tight cartridge containing water, and sealed up. The specifica- 
 tion said that when the charge was, as dynamite, impervious to 
 water, the inner case could be dispensed with. Application to 
 amend, by confining the invention to cases where the inner case 
 was omitted, refused on the ground that the amended specification 
 
18 AMENDMENT : 
 
 would be substantially different from tbe original : — Held, further, 
 that the unamended specification did not materially differ from an 
 invention previously patented, the owner of which opposed the 
 application. (Griff. 310) 
 
 (m) Lake's Patent. [1887] 
 
 Where there is a doubt whether the proposed amendment con- 
 travenes subs. (8) of sect. 18, the amendment ought to be allowed. 
 The fact that the claim itself is not altered is not conclusive 
 that the sub-section is not contravened, because it may be that 
 the words of the claim are large enough to include any mode of 
 production referred to in the specification. (2 Griff, 1 6.) 
 
 (y) Noedenfeldt's Patent. [1887] 
 
 A complete specification which had been filed in the first 
 instance, and claimed the admixture of metallic alumiuium or 
 aluminium alloy with the melted iron or steel before casting the 
 same into moulds substantially as described, stated that the iron 
 or steel was melted in crucibles, converters or metal smelting 
 furnaces of any description, and the addition of the aluminium or 
 alloy of aluminium was made to the metal when molten shortly 
 before it was to be poured. " The addition might, however, be made 
 earlier." These last seven words the applicant now desired to 
 omit, and to insert a long explanation of the principle on which 
 the invention was based, to the efiect that the melting point, after 
 the mixture of the aluminium, being very much lowered, the metal 
 could be superheated by the mixture without taking up gases, as 
 was the case when the temperature was gradually raised above 
 the melting point ; the explanation ended by stating that alumi- 
 nium had a very effective influence upon iron in this direction, and 
 was not detrimental, and that as soon as the metal was molten a 
 small quantity of aluminium, say from about O'Oo to 0-03 per 
 cent, was added, producing a lowering of the melting point of 
 300° to 500° : — Held by the Attorney-General that the omission of 
 the words should be allowed, but that the explanation could not be 
 inserted; for either the fact that aluminium when inserted 
 lowered the melting point was new, in which case there was a 
 very valuable invention sufficiently claimed, or it was not new, in 
 which case it was not a bufficient reason for inserting the proposed 
 amendment merely to say that some alloys would act better than 
 others. In considering whether an amendment is to be allowed, 
 the fact that a complete specification was filed in the first instance 
 is to be considered as a reason against the application. (2 Griff. 18.) 
 
 (w) "Walkee's Patent. 
 
 In a patent for improvements in machinery for cotton-spinning, 
 the claim was for the construction and application of an incUned 
 bearer to support the top clearing rollers substantially as set forth. 
 An application to insert the word " adjustable " before " bearer," 
 wherever it occurred, was refused on the ground that it would 
 make the claim substantially larger. (2 Griff. 22.) 
 
Terms imposed. 19 
 
 0') Eyl'and's Patent. [1888] 
 
 On an application to limit the patent by disclaimer, tlie opponent 
 alleged that the proposed amendment would make the invention 
 claimed substantially larger, but this was held not to be so. The 
 opponent then relied on the fact that there was no declaration, 
 but Webster, A.G., said : " If on the face of the specification it is 
 quite clear that the specification is capable of two constructions, 
 it is open to the applicant to satisfy the comptroller or law officer 
 on the face of the specification, that he desires to limit the claim to 
 one or more or two or more constructions to which the specifica- 
 tion is open." (5 0. B. 665, at p. 668.) 
 
 (Je) Seekell's Patent. [1889] 
 
 The invention claimed consisted in reinforcing the actual 
 contact between two contact pieces of an electric circuit by means 
 of a solenoid. The applicant proposed to amend and to state that 
 his invention consisted of an improved electrical contact device, 
 the main purpose of which is to keep the contact pieces clean. 
 Webster, A.G. : " It would be beyond what is intended by the power 
 of amendment under the Act of 1883, that there being a distinct 
 and specific claim to the operation of what is believed to be new, 
 and there being no claim to the minor arrangement of the contact 
 pieces, the patentee should be allowed to strike out the whole of 
 his claim and insert an independent claim to a subordinate part." 
 (6 0. B. 101, at p. 103.) 
 
 Terms imposed, 
 (x) In re IlAEiirsoN's Patent. [1853] 
 
 Sir E. Bethell, S.G., refused to allow a disclaimer to be entered 
 by the assignee of a patentee who had been unsuccessful in an 
 action for infringement against certain defendants, except upon 
 the terms that an undertaking be given not to bring any further 
 action against the same defendants for any alleged infringement 
 prior to the date of the disclaimer. (Macr. P. G. 32.) 
 
 (m) In re Medlock's Patent. [1865] 
 
 A patent for " improvements in the preparation of red and 
 purple dyes " thus described the process : " I mix aniline with 
 dry arsenic acid, and allow the mixture to stand for some time, 
 or I accelerate the operation by heating it to, or near to, its 
 boiling-point, until it assumes a rich purple colour." It was proved 
 (and not denied by the patentee) that it was necessary to apply 
 heat in order to produce the colour, and upon this ground the 
 patent was held void. An application was now made to disclaim 
 the first of these two methods of preparing the dyes, and the 
 application was opposed by manufacturers who had been de- 
 fendants in previous actions for infringement of the patent. 
 Collier, S.Gr., granted leave to enter the disclaimer, upon the 
 terms that the applicants should bring no action against tha 
 opposers " for any infringement of the said patent by the use or 
 contiaued use, during the continuance of the said patent, of any 
 
 c 2 
 
20 AMENDMENT : 
 
 process or processes for manufacturing or preparing red and purple 
 dyes which is or are in use by them or either of them at the 
 present time." The applicants declined to enter a disclaimer on 
 these terms. (JNewton's London Jour., N. S., vol. xxii., p. 69.) 
 
 (2/) Hearson's Patent. [1884] 
 
 An action for infiingements of a patent for improvements in 
 penholders being nearly ready for trial, the plaintiffs obtained, 
 under sect. 19, from a judge liberty to apply for leave to amend. 
 The judge, not having imposed terms as regarded the pending 
 action, and his order not having been appealed from the law officer, 
 declined to impose any terms relating to the action as a condition 
 for leave to amend. But as regards other actions, the law officers 
 stated that, as a general rule and apart from exceptional circum- 
 stances, it was proper that, when desired, a condition should be 
 imposed that no action should be brought, or other proceeding 
 taken, in respect of any infringement prior to the 1st January, 
 1884. {Griff. 309.) 
 
 (z) Pietschmann's Patent. [1884] 
 
 Under sect. 18, subs. 3, the ComptroUer-General has the 
 power of imposing such conditions as the law officer on appeal 
 could impose ; but the OomptroUer-G-eneral cannot dismiss an 
 application for amendment with costs, and it follows that he 
 cannot mate the payment of costs by the applicant a condition 
 for allowing an amendment. {Griff. 314.) 
 
 (a) CoDD V. Beatby. [1884] 
 
 In 1883 the plaintiff commenced an action for infringement of a 
 patent dated November, 1870, and in July, 1884, moved for liberty 
 to apply to amend under sect. 19. The defendants asked that in 
 addition to other terms a condition should be imposed that the 
 plaintiff should not in any way sue the defendants on the amended 
 specification. The Court said that that would practically be 
 giving the defendants a licence to infringe the plaintiff's machine, 
 and that although there might be cases in which it would be right 
 to impose such a term, it would be going too far to do so in this 
 ease. {Griff. 56; 10. B. 209.) 
 
 (&) Singer v. Stassen & Co. [1884] 
 
 The plaintiff having commenced an action before the date at 
 which the Patents Act of 1883 came into operation applied subse- 
 quently to that date, under sect. 19, for liberty to apply at the 
 office for leave to amend his specification by way of disclaimer : — 
 Held that the section applied, and that the liberty asked ought to 
 be given upon the terms that the costs of and occasioned by the 
 amendment should be defendants' in any event, and that the speci- 
 fication as amended should not be receivable in evidence in the 
 action. (1 0. B. 121. Sub nomine, Singer v. Hasson, W. N. 1884, 
 p. 82 ; 60 L. T. 326.) 
 
Terms imposed. 21 
 
 (c) Westinghouse's Patent. [1885] 
 
 The patent having been declared bad in 1883, and an amendment 
 opposed by the railway companies having been allowed in March, 
 1885, the law officer imposed terms that no action- should be 
 brought against any of the opponents in respect of brakes made 
 and fitted to rolling stock prior to 1st January, 1884, each of the 
 opponents to furnish to "Westinghouse a list of such rolling stock, 
 and to keep him informed of any changes in any apparatus fitted 
 except mere renewal of parts. {Griff. 315.) 
 
 (d) Allen v. Doulton. [1887] 
 
 The 18th and 19th sections of the Act give a discretion to the 
 Court or judges as to the terms on which in each particular case 
 he will allow a disclaimer, and this discretion is not fettered by 
 authority (4 O. R. 377). The patent being for the use of pipes of 
 novel form, constructed of earthenware to form, as described, a 
 direct connection, the patentee applied to leave out the words " of 
 novel form " in the claim, and to make corresponding amendments 
 on the ground that the form of the pipes was not new at the date 
 of the patent, and he did not intend to claim them. The law 
 officer allowed the amendment, and declined to impose any con- 
 dition as to the briaging of actions after the amendments for prior 
 infringements, on the ground that in such an action the Court 
 would have to decide whether sect. 20 applied, and the law 
 officer would not substitute his opinion for that of the Court. 
 (2 Griff. 3.) 
 
 (e) Beat v. Gaedner. [1887] 
 
 Where the plaintiff in an action for infringement asks for leave 
 to apply at the Patent Office to amend his specification by way of 
 disclaimer, the Court will, as a general rule, impose the condition 
 that the amended specification shall not be receivable in evidence, 
 though in particular cases less stringent terms may be imposed. 
 (34 Ch. D. 668 ; 3 T. L. B. 352.) 
 
 (el) Haslam Foundey & Engineeeing Company v. Goodfellow. 
 [1887] 
 
 Where plaintiff's asked to be allowed to apply for leave to dis- 
 claim after all pleadings had been delivered, the application was 
 granted on terms that the plaintiffs should pay in any event the 
 costs of the application and of the action up to and occasioned by 
 the disclaimer, except only so far as the proceedings in the action 
 might be utilised for the purposes of the amended action; the 
 plaintiffs and defendant to be allowed to make all necessary 
 amendments in their pleadings after disclaimer; the plaintiffs 
 to undertake forthwith to amend their pleadings confining the 
 action to the specifications as amended by the disclaimer, or to 
 consent to the action being dismissed with costs. (37 Ch. D. 118 ; 
 5 0. B. 28.) 
 (/) In re Gaulard & Gibb's Patent. [1887] 
 
 Where a petition for revocation was pending and was ready for 
 
22 AMENDMENT : 
 
 trial and the patentee asked to be at liberty to apply for leave to ' 
 amend by disclaimer, liberty was granted on terms that be should 
 apply forthwith and prosecute the application with diligence., 
 i'he petitioner to have notice of the result, and then fourteen days 
 to decide whether be would amend his particulars of objection or 
 abandon his petition. The respondent to pay all costs up to that 
 date. (5 0. B. 189 ; W. N., 1887, p. 211.) 
 
 (g) Fusee Vbbta Company v. Bkyant & May. [1887] 
 
 Plaintiffs in an action for infringement of a patent dated 1885 
 moved for liberty to apply, under sect. 19, for leave to amend 
 th^ir specification by disclaimer, no statement of claim having 
 been delivered. Liberty was granted on terms that no further 
 proceedings be taken in the action until the disclaimer had been 
 properly made, and if so made, the plaintiffs to pay the defendant's 
 party and party costs up to disclaimer ; the plaintiffs to undertake 
 forthwith to take proceedings for disclaimer, and then to amend the 
 action by stating their disclaimer, founding the action simply upon 
 the specification as amended. (34 Cli. B. 468 ; 3 T. i. B. 285.) , 
 
 (7j) Gaulakd v. Lindsay. [1885] 
 
 Pending an action for infringement of several patents, leave was 
 given to the plaintiffs to apply at the Patent Office to amend one 
 of the specifications by way of disclaimer, and to give the amended 
 specification in evidence at the tiial on terms of plaintiff paying 
 all the costs of the action up to the time of leave being given, and 
 waiving all claim to recover damages for infringements prior to 
 the amendment. (38 Gh. £>. 38 ; 5 0. B. 192 ; 57 L. J. Ch. 687.) 
 
 (j) Lang v. Whitecross Company. C. A. [1889] 
 
 The Court of Appeal will not fetter the discretion of the judge 
 as to the terms to be imposed on giving leave to disclaim pending 
 an action by laying down any general rule. When the terms were 
 that no claim should be made for an injunction, or for damages, or 
 for any infringement prior to the disclaimer, and that the plaintiff 
 should pay all costs of action up to that time, the appeal was 
 dismissed with costs. (6 T. L. B. 16 and 57 ; 62 L. T. Bep. 119.) 
 
 (j) Meyer v. Sherwood. C. A. [1890] 
 
 The plaintiff applied after the close of defendants' case for leave 
 to disclaim, and subsequently, having filed a disclaimer, applied for 
 leave to amend his pleadings : — Held, that as the defendants did 
 not intend to infringe the amended patent, leave must be refused 
 and the action dismissed with costs. (7 0. B. 283.) 
 
 Operation of. 
 
 (J) Perry v. Siunner. [1837] 
 
 The Act 5 & 6 Will. 4, c. 83, had not a retrospective operation 
 so as to make a party liable for an infringement, prior to the 
 time of entering a disclaimer. (2 M. & W. 471 ; 1 Web. P. G. 260. 
 ■See sect. 39 o/15 & 16 Vict. c. 83.) (Questioned in B. v. Mills, infra.) 
 
Operation of. 23 
 
 (m) Claek v. Kenrick. [1843] 
 
 The effect of the statute 5 & 6 Will. 4, c. 83, was to render the 
 disclaimer, when made, part of the patent and the specification. 
 The patentee, from the moment of the disclaimer, becomes patentee 
 of the nndisclaimed part only. (12 M. & W. 221.) 
 
 (n) Stocker v. Waller. [1845] 
 
 Tindal, C.J. : " The mere fact of a disclaimer being made by 
 a party to whom a grant has been made does not necessarily 
 import that the original patent was void ; for the object of the 
 statute was not only to enable inventors to set themselves right 
 when the letters patent, from some cause or other, would have 
 been held to be void, but also to remove doubts and difficulties 
 which would otherwise hang over the heads of parties bringing 
 actions for an infringement, by enabling them to enter a dis- 
 claimer of a part of the specification or title of the patent." 
 (9 Jur. 138. Eeported under name of StocJeer v. Warner, 1 C. B, 
 148.) 
 
 (o) E. V. Mill. Sei. fac. [1850] 
 
 In an action of scire facias, a disclaimer, though enrolled sub- 
 sequently to issue joined, is admissible as evidence for the 
 defendant, and is to be read as part of the original specification 
 put in by the prosecutor. Semhle, in actions or suits, not being 
 proceedings by scire facias, and which were not pending at the 
 time of the enrolment of a disclaimer, the disclaimer is to be 
 deemed and taken to be a part of the patent or specification from 
 the time of the granting of the letters patent, and not from the 
 time of its enrolment merely. The decision in Perry v. Skinner 
 questioned. (10 G. B. 379; 20 L. J. C. P. 16; 15 Jur. 59; 
 1 L.M.d; P. 095.) 
 
 (p) In re Lucas's Patent. [1854] 
 
 There are exceptional cases where a disclaimer should be made 
 retrospective, so as to give the patentee power to proceed against 
 those who infringed before the disclaimer was filed, as where 
 a person, having obtained his information from the patentee, 
 presumes upon a defect in his specification, and infringes the 
 valuable part of his patent. (Macr. P. G. 235.) 
 
 {q) In re Smith's Patent. [1855] 
 
 Disclaimer allowed, on condition that an undertaking be 
 given that no action shall be brought in respect of anything 
 done prior to the hearing of the application for a disclaimer. 
 {Macr. P. C. 232.) 
 
 (r) Tetley v. Easton. [1857] 
 
 The effect of a disclaimer is merely to strike out from the 
 specification those parts of the machine which are disclaimed ; it 
 cannot be read as explanatory of that which remains. (2 G. B.. 
 N. S., 706.) 
 
24 AMENDMENT : 
 
 (s) Lister «. Leather. [1857] 
 
 In a suit pending at the time of enrolment of a disclaimer, a 
 plaintiff cannot avail himself of it by amending his bill ; he must 
 file a fresh bill. (3 Jur., N. S., 433.) 
 
 (t) Seed v. Higgins. H. L. [1860] 
 
 A patentee claimed by his specification " the application of the 
 principle of centrifugal force to the flyers employed in certain 
 machinery for roving cotton and other fibrous substances," but 
 declared that his improvements "applied solely to such part of 
 the machinery, called the flyers, -which is employed in connection 
 with the spindle for the purpose of winding cotton." He attached 
 drawings to his specification, and went on to say that these 
 drawings and the specification represented " one particular and 
 practicable mode of applying " his invention, but " I do not intend 
 to confine myself to this particular method, but I claim as my 
 invention the application of the law or principle of centrifugal 
 force to the particular or special purpose above set forth, that is, 
 to flyers used in machinery for preparing cotton." He afterwards 
 disclaimed " all application of the law or principle of centrifugal 
 force as being part of my invention, or as being comprised in my 
 claim of invention contained in the specification, except only the 
 application of centrifugal force, by means of a weight acting upon 
 a presser so as to cause it to press against a bobbin, as described in 
 the specification " : — Meld, that this disclaimer did not extend the 
 claim, but confined it to a particular mode of applying the principle 
 of centrifugal force, and did not claim the discovery of that 
 principle, or the application of it, except in a particular way, and 
 that, therefore, the patent was good. ('4 Jur., N. S., 258 ; 27 L. J. 
 Q. B. 145; affirmed in Exch. Ch. and Dom. Proc, 27 L. J. Q. B. 
 411 iSS.L. Gas. 650 ; 30 L. J. Q. B. 314; 6 Jur., N. S., 1264.) 
 
 (v) Cannington v. Nuttall. H. L. [1871] 
 
 The plain language of the operative part of a disclaimer is not 
 to be controlled or modified by any introductory sentences with 
 which the patentee may think fit to preface such disclaimer. 
 (L. B., 5 E. L. 205.) 
 
 Lord Westbury : " The reason for a disclaimer is no part of 
 the disclaimer itself. The operative part of the disclaimer begins 
 in this way : ' I, for this reason, wish to disclaim, and do hereby 
 disclaim.' " {lb. 227.) 
 
 (w) In re Bekdan's Patent. M. E. [1875] 
 
 Where a disclaimer has been filed without the consent of the 
 patentee, the Master of the Eolls has jurisdiction, without bill 
 filed, to order it to be taken off the file. 
 
 Jessel, M.E., in delivering judgment, said : " The question is, 
 whether the Master of the Eolls has jurisdiction to set this right 
 without bill filed, by removing from the record the documents 
 which have been thus filed. There is no authority on the subject. 
 .... I may observe that In re Sharp's Patent (8 Beav. 245) has 
 
Operation of. 25 
 
 no direct bearing on this case, as there the application was not to 
 take documents off the file, but to alter an enrolment; and Lord 
 Langdale considered that he had no jurisdiction to do more by a 
 memorandum of alteration than to amend some slips or clerical 
 errors." (L. B., 20 Eq. 346.) 
 
 (a;) DuDSEON V. Thomson. H. L. [1877] 
 
 A patentee, having altered his specification by disclaimer, 
 lodged a complaint against certain manufacturers for breach of 
 an interdict granted anterior to the disclaimer : — Held, that the 
 patentee ought to have instituted a new action, and that, after the 
 disclaimer, the question of enforcing the old interdict could not be 
 entertained. (L. B., 3 App. Gas. 34.) 
 
 Lord Blackburn ; " The object of a disclaimer is merely to take 
 out and renounce part of what had been claimed before, and it 
 would vitiate the new specification if by striking out that part 
 you gave an extended and larger sense to what is left so as to 
 make it embrace something which it did not embrace before." 
 {lb. 65.) 
 
 («/) In re Pullan's Patent. L. 0. [1878] 
 
 The Lord Chancellor, upon an ex parte application, corrected a 
 filed specification by adding drawings alleged to have been omitted 
 through inadvertence. The drawings so added were not described 
 in the specification. Some months after the addition was effected, 
 an application was made to the Lord Chancellor by a patentee, 
 who had been threatened with an action for infringing the 
 amended patent, to rehear the original application. The Lord 
 Chancellor decided to hear the matter afresh, and, upon reading 
 the affidavits on both sides, and considering that his order had 
 been made on imperfect information, ordered the added drawings 
 to be struck out of the specification. (Not reported ; see Johnson's 
 Patentees' Manual, 5th ed., p. 118.) 
 
 (z) The Plating Company v. Farqtjharson. [1879-1883] 
 
 A patentee who disclaims cannot be permitted to play fast and 
 loose with the public. If he alters the terms of a claim originally 
 wide and general by inserting limiting words, he must be bound 
 by the limitation which he has so designedly introduced. He 
 must be presumed to have made the change, because he knew, or 
 at least was apprehensive, that the claim in its original latitude 
 might not be tenable in law ; and whether this be really so or 
 not, he has irrevocably relinquished in favour of the public so 
 much of the original claim as was in excess of the limits within 
 which it has been reduced by the disclaimer. 
 
 The patentee of an invention for improvements in the electro- 
 deposition of nickel, by disclaimer struck out three of the five 
 claims in the original patent, and inserted in the first claim 
 (which was for this case the only material one left) the words " as 
 above described " after the word " prepared." It appeared that 
 the defendant's solution was, in fact, prepared in a manner sub- 
 
26 AMENDMENT. 
 
 stantially different from the metHod described in the specification :— 
 Held, no infringement. (Qriff. 187.) 
 
 (a) United Telephone Company v. London and Globe Telephone 
 Company. [1883] 
 
 In an action for infringement of the Blake patent for telephonic 
 transmitters, the defendants admitted the infringement, and said 
 that, although they did not admit the validity of the patent, they 
 were willing to alter their instruments so as no longer to con- 
 travene the patent. The plaintiffs weie also owners of Edison's 
 patent for transmitters of similar construction, and the defendants 
 relied on the fact that the Attorney-General, in allowing the 
 plaintiffs to disclaim a certain part of the specification in the 
 Edison patent, had done so on condition that no action should be 
 brought against the defendants and others in respect of instru- 
 ments made or in course of manufacture at that time. The 
 Attorney-General had subsequently made an award that the 
 defendants were exempt from proceedings in respect of the 800 
 instruments, the subject of this action, which were admittedly 
 infringements of the Edison patent : — Seld, that the defendants 
 were neither entitled to succeed on the ground that they had not 
 used nor on the ground of the Attorney-General's award, and that 
 they must he restrained by injunction. (32 W. JR. 870.) 
 
 (b) Cheeseboeough's Patent. [1884.J 
 
 Leave was given to amend subject to the term that no action 
 was to be brought for infringements committed prior to the 1st 
 of January, 1884, and it was held that the continued use of lamps 
 made prior to that date was protected, and that this protection 
 extended to lamps made bond fide prior to that date, even although 
 unsold. (Oriff. 303.) 
 
 (c) Westinghotirb's Patent. [1885] 
 
 Where the stock of the opponents, fitted with any apparatus 
 made in alleged accordance with the specification, was protected 
 from the effects of an order allowing leave to disclaim, each 
 opponent was ordered within six weeks to furnish to the patentee 
 at the office of his solicitors a full statement of the locomotive b and 
 vehicles which had been fitted with such apparatus, referring to 
 them by distinguishing marks, and setting forth the nature of 
 brake apparatus fitted prior to the date of the order. And each 
 opponent was from time to time during the subsistence of the 
 patent to give immediate notice to the patentee of any change in 
 any apparatus so fitted except mere renewal of parts. The 
 patentee was allowed eight weeks from the date of the order to 
 deposit in the Patent Office an undertaking to accept the amend- 
 ment upon the conditions imposed. (1 Griff. 315.) 
 
 (d) Wenham v. Carpenter. [1887] 
 
 Where there had been an amendment by disclaimer the plaintiff, 
 in the absence of proof that the original claim had been prepared 
 in good faith and with reasonable skill and knowledge, withdrew 
 
AMENDMENT. 27: 
 
 his claim for damages in respect "of anything prior to the dis- 
 claimer, and the account was limited to articles which had since 
 the amendment been manufactured or sold or used by or by the 
 order or for the profit of the defendants. (5 0. B. 68.) 
 
 (e) Allen's Patent. [1887] 
 
 The law officer will not impose such a condition in allowing a 
 disclaimer as would in effict substitute his opinion for that of the, 
 Court as to whether good faith and reasonable skill and know- 
 ledge within the meaning of sect. 20 have been used. (2 Griff. 3.), 
 
 (/) Ex parte Simon. [1888] 
 
 If the Attorney-General allows an amendment which makes the 
 patent substantially larger or substantially diiferent, such amend- 
 ment is a nullity. (T. L. Bep., IV., 754.) 
 
 Practice. 
 
 (g) In re Sharp's Patent. [1840] 
 
 The Master of the Rolls has no jurisdiction to remove from the 
 records of the Court of Chancery a memorandum of alteration 
 enrolled under the statute. (1 Web. P. 0. 641 ; 3 Beav. 245 ; 
 2 Carp. P. C. 461.) 
 
 (h) H. V. Mill. Sci.fac. [1851] 
 
 Pending a proceeding in scire facias to repeal a patent, the 
 patentee disclaimed a part. The prosecutor still proceeded, and 
 ultimately failed : — Held, that he ought to pay the costs subse- 
 quent to the disclaimer. (14 Beav. 312.) 
 
 (i) Wallington v. Dale. [1852] 
 
 The filing of the copy of a disclaimer is a compliance with the 
 provisions of 5 & 6 Will. 4, c. 83, s. 1. (7 Bxch. 888 ; 23 L. J. 
 ExcJi. 49.) 
 
 (_/) J?i j-e Medlock's Patent. [1865] 
 
 A fiat had been granted by the Solicitor-General in this case 
 to enter a disclaimer, subject to the acceptance by the applicant 
 of certain conditions. The applicant refused to accede to these 
 conditions, and the Solicitor-General filed a disallowance of the 
 disclaimer. An appeal was then made to the Patent Commis- 
 sioners, in the firm of a petition, setting out the facts of the case, 
 and ending with the following prayer : — ' 
 
 " 1. That the Solicitor-General, having granted his fiat for the 
 disclaimer, your petitioners submit that such fiat cannot be 
 recalled, and they pray that you will be pleased to file the 
 said disclaimer witia the fiat, so that your petitioners, not 
 having consented to the conditions, may be enabled to try 
 the quesiion of their validity. 
 
 " 2. Or, that the said disclaimer may be referred to one of the 
 law officers mentioned in the statute, with such instruction 
 as to you the Commissioners of Patents may seem fit. 
 
28 AMENDMENT : 
 
 "3. Or, that the Commissioners of Patents require a fuller 
 statement of the case, that your petitioners may he heard 
 hy counsel before the Commissioners of Patents. 
 
 " 4. That the Commissioners of Patents will give to your 
 petitioners such further or other relief as they may see 
 fit." 
 
 This petition was returned by the Lord Chancellor, indorsed 
 " refused." {Newton's London Jour., N. S., vol. xxii., p. 70.) 
 
 (i) Arnold's Patent. [1887] 
 
 A patentee for improvements in steam boilers made an applica- 
 tion to the Comptroller-General to amend his specification, hut 
 was refused, and did not appeal. After some months he renewed 
 his application, was again refused, and then appealed to the law 
 officer : — Held, that the appeal could not be entertained, the only 
 reason alleged for not appealing from the first decision being 
 ignorance. (2 Griff, 5.) 
 
 (Z) Lake's Patent. [1887] 
 
 As a matter of practice, in the absence of very special circum- 
 stances, the Comptroller-General should neither give nor receive 
 costs. (2 Griff. 16.) 
 
 Amendment of Clerical Errors. 
 
 Patents Act, 1883, sect. 91. The comptroller may, on request in writing 
 accompanied by the prescribed fee : — 
 
 (as) Correct any clerical error in or in connection with an application for a 
 
 patent; or 
 (J) Correct any clerical error in the name style or address of the registered 
 proprietor of a patent. 
 
 Patent Rules, 1890, rule 16. Any document for the amending of which no 
 special provision is made by the said Acts may be amended, and any irregu- 
 larity in procedure, which in the opinion of the comptroller may be obviated 
 without detriment to the interests of any person, may be corrected, if and on 
 such terms as the comptroller may think fit. 
 
 Rule 59. Every amendment of a specification shall be forthwith advertised 
 by the comptroller in the official journal of the Patent Of&ce, and in such other 
 manner (if any) as the comptroller may direct. 
 
 {m) Ex parte 'B^CK. [1784] 
 
 A caveat entered against the sealing of a patent which bore 
 date August 12, 1784, was not discharged until August 27th. 
 The patentee, supposing his patent bore date the latter day, did 
 not enrol his specification till December 18th, when the four 
 months allowed for enrolment had expired. The Lord Chancellor 
 said that although satisfied that the patentee was well entitled to 
 his patent, he could not use his power as Keeper of the Great Seal 
 to alter a patent in any degree upon an application of this sort. 
 (1 Br. C. a 578.) 
 
Of Clerical Errors. 29 
 
 (n) In re Eedmond's Patent. [1828] 
 
 Clerical error by copying clerk in specification transposing 
 reference numbers, amended by the Master of the Eolls. (6 Buss. 
 U; 1 Web. P. a 64:9, note.') 
 
 (o) In re Whitehouse's Patent. [1830] 
 
 Word " wire " substituted by mistake for " fire " in original 
 specification : amended five years afterwards by M.E. (1 Web. 
 P. a 649, note.) 
 
 (p) In re Eubery's Patent. [1837] 
 
 Eecital in specification tbat patent had been granted in 
 " October " instead of " November " amended. The petition 
 stated that no scire fac, or other proceedings at law, had been 
 instituted. (1 Weh. P. 0. 649, note.) 
 
 (q) In re Sharp's Patent. [1840] 
 
 Except for the purpose of correcting mere verbal or clerical 
 errors, proved to have arisen from mistake or inadvertence, the 
 Master of the Eolls had no authority to make any alteration in 
 the enrolment of the patent or of the specification. 
 
 If an enrolled memorandum of alteration, by mistake of the 
 writer, contained verbal or clerical errors, by means of which 
 something was enrolled contrary to the true intent of the party, 
 the Master of the Eolls had authority to correct the error and 
 make the enrolment accord with the proved intention of the party 
 at the time of enrolment. (1 Web. P. C. 645.) For instances in 
 which verbal amendments have been made by the Master of the 
 Eolls, see 1 Web. P. C. 647, note (T). 
 
 (r) In re Nickel's Patent. [1841] 
 
 In this case " recovering " had been written for " covering." 
 The Chancellor and Master of the Eolls made a joint order for 
 the re-sealing of the letters patent with an alteration of this 
 mistake, on the undertaking of the patentee to abandon and pay 
 the costs of an action then pending, and not to bring any action 
 for infringement before the re-sealing. (^Turner & Phillips, 36 ; 
 1 Web. P. a 650.) 
 
 The petitioner not acceding to these terms, relief was refused ; 
 and the petitioner was ordered to pay the costs of the party 
 opposing the petition. (^Hindmarch, p. 218.) 
 
 The Master of the Eolls had no authority to amend letters 
 patent ; the Lord Chancellor alone could do so. (1 Web. P. G. 660.) 
 
 The mode of making the alteration followed in a former case 
 explained to be that the Master of the Eolls came into the Lord 
 Chancellor's court, and under the authority of the Lord Chancellor 
 the patent, having been altered, was re-sealed ; and then the Master 
 of the Eolls made the enrolment correspond with the patent so 
 altered. (1 Web. P. G. 663.) 
 
30 AMENDMENT. 
 
 (r) In re Dismoee's Patent. [1853] 
 
 Name " Charles " Instead of " George " inserted in engrossing 
 specification after enrolment. Lord Eomilly, M.E., took time to 
 consider, and after some hesitation made an order on the authority 
 of and similar to that in Eubery's case. He required, however, 
 that the signature of the Attorney-General should be obtained, 
 and that the letters patent themselves should be handed in for 
 inspection.. (18 Beav. 638.) 
 
 {s) In re Adams's Patent. [1853] 
 
 The engrossment of letters patent bore date two days after the 
 date of the writ of the privy seal, and the patentee, not being aware 
 of the discrepancy, was a day too late in enrolling his patent ; 
 ordered that, as the mistake arose from a misprision of the clerk, 
 the enrolment should be amended. (21 L. T. Bep. 38.) 
 
 («) In re Blamond's Patent. [1860] 
 
 An application for amendment of a patent granted in 1856, by 
 rectifying an error in the spelling of the name of the patentee, was 
 refused on the ground of lapse of time. Qusere, whether the Court 
 had power to make such an order under 15 & 16 Vict. c. 83, s. 15. 
 (8 L. T. Bep., N. S., 800.) 
 
 (u) In re Johnson's Patent. [1877] 
 
 The power of the Master of the EoUs as Keeper of the Eecords 
 to amend a clerical error in a specification was saved by the Judi- 
 cature Acts, 1873, sect. 17, subs. 6. When such amendment 
 was directed, notice of the order had to be given to the Com- 
 missioners of Patents so that the specification might be reprinted. 
 (5 Gh. D. 503.) 
 
 (h) Morgan's Patent. [1886] 
 
 Misdescription of one of the drawings amended by the law 
 officer although the patent was ten years old. (2 Griff. 17.) 
 
 Amendment of Particulars of Breaches, 
 (w) Jones v. Pratt. [1861] 
 
 Semhle the plaintiff might be allowed to amend his particulars 
 
 of breaches after issue joined in accordance with defendant's 
 
 answers to interrogatories delivered after that date. (30 L. J. 
 Exch. 365.) 
 
 Amendment of Particulars of Objections. 
 
 See under Practice, Particulars of Objections, pp. 305 (s) (i), 306 (v) (ly) (cc). 
 
 Amendment of Petition for Extension. 
 See Extension of Term. Petition, p. 104 (a). 
 
APPEAL. 31 
 
 Amount of Labour in Invention. 
 
 (x) Crane v. Price. [1842] 
 
 If the invention be new and useful to the public, it is not 
 material whether it be the result of long experiments and pro- 
 found research, or of some sudden and lucky thought, or of mere 
 accidental discovery. (12 L. J. C. P. 81.) 
 
 Amount of Invention. See under Subject Matter. 
 
 Analogous use. See Subject Matter, Application of known machine, 
 process, or material to analogous purpose, pp. 532 to 540. 
 
 Analysis. 
 
 Patent Type Pounding Company v. Walter. [1860] 
 
 The Court of Chancery had jurisdiction to order, and did order, 
 the defendant to deliver a sample of type for analysis. (8 W. B. 
 353). 
 
 Now by Supreme Court Eules, 1883, Order L., Eule 3, it shall 
 be lawful for the Court or a judge, upon the application of any 
 party to a cause or matter, and upon such terms as may be just 
 for all or any of the purposes aforesaid, to authorise any samples 
 to be taken, or any observation to be made or experiment to be 
 tried which may be necessary or expedient for the purpose of 
 obtaining full information or evidence. 
 
 Annual Fees. 
 
 In lieu of the fees of £50 and £100 payable on certificates of renewal 
 annual fees may be paid. Bee under Fees, p. 143. 
 
 Annual Report. 
 
 Patents Act, 1883, sect. 102. The comptroller shall, before the first day of 
 June in every year, cause a report respecting the execution by or under him 
 of this Act to be laid before both Houses of Parliament, and therein shall 
 include for the year to which each report relates all general rules made in 
 that year under or for the purposes of this Act, and an account of all fees, 
 salaries, and allowances, and other money received and paid under this Act. 
 
 Anticipation. See Novelty, p. 220. 
 
 Appeal, 
 
 hearing evidence on, pp. 881 (&) (d) (e) W), 382 (g^) 
 injunction pending, p. 381 (c) ^"^i 
 
 account stayed pending, p. 371 (w) (y), (c) 
 delivery of infringing machines pending, P" Sgl (a). 
 From comptroller — 
 
 when he refuses to accept application, p. 32 
 
 requires amendment, p. 32 
 
 decides in case of opposition, p. 32 
 
 refuses leave to amend, p. 32 
 rules relating to, p. 380 
 decision allowing patent not reversed unless case is clear, p. 32 (^) (a). 
 
32 APPLICATIONS. 
 
 Appeal from Comptroller, 
 
 Patents Act, 1883, sect. 7 (2), amended by 51 & 52 Vict. c. 60, sect. 2. 
 
 (2.) Where the comptroller refuses to accept an application, or requires an 
 amendment, the applicant may appeal from his decision to the law officer. 
 
 (3.) The law officer shall, if required, hear the applicant and the 
 comptroller, and may make an order determining whether, and subject to 
 what conditions (if any), the application shall be accepted. 
 
 [The words of the section are set out in full at p. 34.] 
 
 Sect. 9 (2.) If the examiner reports that the conditions hereinbefore con- 
 tained have not been complied with, the comptroller may refuse to accept the 
 complete specification unless and until the same shall have been amended 
 to his satisfaction ; but any such refusal shall be subject to appeal to the 
 law officer. 
 
 (3.) The law officer shall, if required, hear the applicant and the comp- 
 troller, and may make an order determining whether and subject to what 
 conditions, if any, the complete specification shall be accepted. 
 
 [The words of the section are set out in full at p. 35.] 
 
 Sect. 11 (2.) (When notice of opposition is given the comptroller shall) .... 
 decide on the case, but subject to appeal to the law officer. 
 
 (3.) The law officer shall, if required, hear the applicant and any person so 
 giving notice, and being, in the opinion of the law officer, entitled to be heard 
 in opposition to the grant, and shall determine whether the grant ought or 
 ought not to be made. 
 
 (4.) The law officer may, if he thinks fit, obtain the assistance of an 
 expert, who shall be paid such remuneration as the law officer, with the 
 consent of the Treasury, shall appoint. 
 
 [The words of the section are set out in full at p. 38.] 
 
 Sect. 12 (3.) (a.) Where the sealing is delayed by an appeal to the law 
 officer, or by opposition to the grant of the patent, the patent may be sealed 
 at such time as the law officer may direct. 
 
 Sect. 18 (6.) When leave to amend is refused by the comptroller, the 
 person making the request may appeal from his decision to the law officer. 
 
 (7.) The law officer shall, if required, hear the person making the request 
 and the comptroller, and may make an order determining whether, and subject 
 to what conditions, if any, the amendment ought to be allowed. 
 
 [For the remainder of the section, see p. 10.] 
 
 {y) Glossop's Application. [1884] 
 
 Where tlie matter is in doulDt, and where the Comptroller-General 
 has allowed the patent, the law officer ought not to disallow the 
 patent and reverse his decision unless the case is a perfectly 
 clear one. {Griff. 285.) 
 
 (a) Pitt's Application. [1888] 
 
 Where the nature of the case was sucli that the law officer would 
 have required expert assistance, he declined to reverse the decision 
 of the Comptroller-General, who in his turn had, of course, heen 
 advised by those whose duty it was to express an opinion, and 
 dismissed the appeal with costs. (5 0. B. 343.) 
 
 Applications of known machines, processes or materials. See under 
 Subject Matter, p. 522 (scj.). 
 
APPLICATION FOE LETTEES PATENT. 33 
 
 Application for and Grant of Patents. 
 
 Patents Act, 1883, sects. 4 to 9, amended by 48 & 49 Vict. c. 63, and 
 
 51 & 52 Vict. 0. 50, pp. 34, 35, 36. 
 Patent Rules, 1890, Eules 6, 8 to li, and 18 to 23, pp. 36, 37. 
 Applications generally — 
 
 Patent Office cannot inquire whether claim goes beyond invention 
 
 described, p. 37 (h) 
 nor as to the form of the title if it does not infringe the Act, p. 37 (c) 
 but may.strike out what is misleading, p. 38 (e) 
 or disallow complete specification if borrowed from other specifications, 
 
 p. 38 (d). 
 Application — Opposition. 
 
 Patents Act, 1883, sect. 11, Eules 34 to 44, pp. 38, 39. 
 Opposition generally — 
 prior user is no longer a bar to the grant, p. 40 
 cases before the Act of 1883, pp. 40, 41, 42 
 service on opponent, p. 40 (k) 
 where grounds of opposition are doubtful, it is proper to grant patent, 
 
 pp. 40 (I) (m), 41 (s) 
 delay in opposing, p. 41 (n) (o) 
 who may oppose, p. 42 (v) (w) 
 amendment of notice of objections, p. 42 (x) (y). 
 
 Opposition on ground that invention was obtained from opponent — 
 cases before the Act of 1883, p. 43 
 joint inventors, pp. 43 (c), 44 (d) (e), 45 (/) (/') 
 applications granted with reference to opponent's patent, pp. 44 (c), 46 Qe') 
 words " obtained from opponent" do not include communications from 
 abroad, pp. 43 (e), 46 (i) (h). 
 
 Opposition on ground that invention has been patented in this country — 
 cases before the Act of 1883, p. 47 
 
 Who may oppose, pp. 48, 49 
 persons interested in prior patent, even though it has expired, may, 
 
 p. 48 (u) (y) (w) 
 not those who merely manufacture under it, p. 49 (d) (e) 
 nor chose who have only obtained provisional protection, p. 48 (x) (z) 
 nor foreign patentees whose patent has been antedated under sect. 103, 
 p. 48 (J). 
 
 Insertion of disclaiming clauses — 
 
 is meant to protect the pubMc and not prior patentees, pp. 50 (l), 51 (p) 
 
 prior patentee has no right to be named, pp. 50 (/) (m), 51 (q) 
 
 a reference to a prior patent is to be deprecated, p. 50 (/) 
 
 form of disclaimer, pp. 50 (i), 51 (») (r) (s) 
 
 opponent may appeal merely to get disclaimer inserted, p. 51 (f). 
 
 Prior invention not the same — 
 
 opposition wiU not succeed where prior patent is not the same, p. 52 
 nor when the applicant's invention has been described but not claimed, 
 p. 52 (z). 
 
 Concurrent applicants — 
 formerly the first who obtained the seal succeeded, p. 54 
 might obtain a joint patent, p. 54 (i) 
 
 might each obtain provisional protection for same invention, p. 55 (k) 
 and sometimes separate patents also, p. 55 Q) (m), 56 (p). 
 
 Costs — 
 when opposition not unreasonable, p. 56 {r) 
 successful, p. 57 (w) (x) 
 
 B 
 
34 APPLICATION. 
 
 Costs (continued'). 
 
 when opposition not unsuccessful, pp. 56 (s), 57 (f) (y) 
 
 when withdrawn, pp. 57 (u^) Qui), 58 (c) 
 how taxed, p 57 (0 
 
 of appeal to law officer will usually follow the event, p. 58 (z). 
 Delay — 
 
 in enrolling specification, p. 58 (/) 
 in entering opposition, pp. 41 (o), 59 (m) 
 in filing affidavits in opposition, 57 (y). 
 ' Procedure — 
 
 specification cannot be dispensed with, p. 60 (p) 
 
 er received conditionally, p. 60 {q) 
 
 application by opponent for inspection refused, p. 60 (s) 
 
 notice to applicant of appeal to law officer, p. 61 (u). 
 
 International and Colonial arrangements — 
 
 Patents Acts, 1883, sects. 103, 104, and 1885, sect. 6, p. 61. 
 
 Orders in Council, p. 62 
 
 Eules 24 to 29, pp. 62, 63 
 
 application must be in name of original foreign patentee, p. 64 (y). 
 
 Patents Act, 1883, sect. 4. (1.) Any person, whether a British subject or 
 not, may make an application fur a patent. 
 
 (2.) Two or more persons may make a joint application for a patent, and a 
 patent may be granted to them jointly. 
 
 [See sect. 5 of Act of 1885, inf., p. 36.] 
 
 5. (1.) An application for a patent must be made in the form set forth in 
 the First Schedule to this Act, or in such other form as may be from time to 
 time prescribed ; and must be left at, or sent by post to, the Patent Office in 
 the prescribed manner. 
 
 (2.) An application must contain a declaration to the efieot that the applicant 
 is in possession of an invention, whereof he, or in the caseof a joint application, 
 one or more of the applicants, claims or claim to be the true and first iuventor 
 or inventors, and for which he or they desires or desire to obtain a patent; 
 and must be accompanied by either a provisional or complete specification. 
 
 [See sect. 2 of Act of 1885, inf., p. 36.] 
 
 (3.) A provisional specification must describe the nature of the invention, 
 . and be accompanied by drawings, if required. 
 
 (4.) A complete specification, whether left on application or subsequently, 
 must particularly describe and ascertain the nature of the invention, and in 
 . what manner it is to be performed, and must be accompanied by drawings, if 
 required. 
 
 [See sect. 2 of Act of 1886, p. 84.] 
 
 (5.) A specification, whether provisional or complete, must commence with 
 the title, and in the case of a complete specification must end with a. distinct 
 statement of the invention claimed. 
 
 6. The comptroller shall refer every application to an examiner, who shall 
 ascertain and report to the comptroller whether the nature of the invention 
 
 ' has been faiily described, and the application, specification, and drawings (if 
 any) have been prepared in the prescribed manner, and the title sufficiently 
 indicates the subject matter of the invention. 
 
 7. (1.) (Amended by 51 & 52 Yict. c. 50, sect. 2). For section 7 of the 
 principal Act the following section shall be substituted, namely : If the 
 examiner reports that the nature of the invention is not fairly described, or 
 that the application,- specification, or drawings has not, or have not, been 
 prepared in the prescribed manner, or that the title does not sufficiently 
 indicate the subject matter of the invention, the comptroller mat/ refuse to 
 accept the application, or require that the application, specification, or 
 
APPLICATION. 35 
 
 drawings he amended before he proceeds with the application ; and in the 
 latter case the application shall, if the comptroller so directs, hear date as 
 from the time ivhen the requirement is complied with. 
 
 (2.) Where the comptroller refuses to accept an application or requires an 
 amendment, the applicant may appeal from his decision to the law officer. 
 
 (3.) The law officer shall, if required, hear the applicant and the comptroller, 
 and may make an order deteiTnining whether, and subject to what conditions 
 [if any], the application shall be accepted. 
 
 (4.) The comptroller shall, when an application has been accepted, give 
 notice thereof to the applicant. 
 
 (5.) If, after an application for a patent has been made, but before the 
 patent thereon has been sealed, another application for a patent is made, 
 accompanied by a specification bearing the same or a similar title, the comp- 
 troller, if he thinks fit, on the request of the second applicant, or of his legal 
 representative, may, within two months of the grant of a patent on the first 
 application, either decline to proceed with the second application or allow 
 the surrender of the patent, if any, granted thereon. 
 
 8. (Amended by 48 & 49 Vict. c. 63, sect. 3.) (1.) If the applicant does 
 not leave a complete specification with his application, he may leave it at any 
 subsequent time within nine months from the date of application, [or within 
 such extended time, not exceeding one month, as the comptroller may on 
 payment of the prescribed fee allow']. 
 
 (2.) Unless a complete specification is left within that time the application 
 shall he deemed to be abaimoned. 
 
 9. (Amended by 48 & 49 Vict. c. 63, sect. 3.) Where a complete specifi- 
 cation is left alter a provisional specification, the comptroller shall refer both 
 specifications to an examiner for the purpose of ascertaining whether the com- 
 plete specification has been prepared in the prescribed manner, and whether 
 the invention particularly described in the complete specification is sub- 
 stantially the same as that which is described in the provisional specification. 
 
 (2.) If the examiner reports that the conditions hereinbefore contained 
 have not been complied with, the comptroller may refuse to accept the com- 
 plete specification unless and until the same shall have been amended to his 
 satisfaction; but any such refusal shall be subject to appeal to the law officer. 
 
 (3.) 'i he law officer shall, if required, hear the applicant and the comptroller, 
 and may make an order determining whether and subject to what conditions, 
 if any, the complete specification shall be accepted. 
 
 (4.) Unless a complete specification is accepted within twelve months (or 
 within such extended time not exceeding three months as the comptroller may on 
 paymsnt of the prescribed fee allow') from the date of application, then (save 
 in the case of an appeal having been lodged against the refusal to accept) the 
 application shall, at the expiration of those twelve months [or of such extended 
 time], become void. 
 
 (5.) (Amended by 51 & 52 Vict. c. 50, sect. 3.) Repoits of examiners 
 shall not in any case be published or be open to public inspection, and shall 
 not be liable to production or inspection in any legal proceeding, unless the 
 Court or officer having power to order discovery in such legal proceeding shall 
 certify that such production or inspection is desirable in the interes'.s of justice, 
 and ought to be allowed. 
 
 48 & 49 Vict. c. 63, sect. 2. Whereas sub-sect. 2 of sect. 5 of the 
 prineipal Act requires a declaration to be made by an applicant for a patent 
 to the effect in that sub-section mentioned, and doubts have arisen as to the 
 nature of that declaration, and it is expedient to remove such doubts ; be it 
 therefore enacted that : The declaration mentioned in sub-sect. 2 of sect. 5 
 of the principal Act may be either a statutory declaration under the 
 Statutory Declarations Act, 1835, or not, as may be from time to time 
 prescribed. 
 
 D 2 
 
36 APPLICATION FOE LETTERS PATENT. 
 
 Sect. 3. Whereas under the principal Act, a complete specification is 
 required (by section eight) to be left within nine months, and (by section 
 nine) to be accepted within twelve months, from the date of application, 
 and a patent is required by section twelve to be sealed within fifteen months 
 from the date of application, and it is expedient to empower the comptroller 
 to extend in certain cases the said times : Be it therefore enacted as follows : 
 
 A complete specification may be left and accepted within such extended 
 times, not exceeding one month and three months respectively after the said 
 nine and twelve months respectively as the comptroller may on payment of 
 the prescribed fee allow, and where such extension of time has been allowed, 
 a further extension of four months after the said fifteen months shall be 
 allowed for the sealing of the patent ; and the principal Act shall have effect 
 as if any time so allowed were added to the said periods specified in the 
 principal Act. 
 
 4. Where an application for a patent has been abandoned, or become void, 
 the specification or specifications and drawings (if any) accompanying or left 
 in connexion with such application, shall not at any time be open to public 
 inspection or be published by the comptroller. 
 
 5. Whereas doubts have arisen whether under the principal Act a patent 
 may lawfully be granted to several persons jointly, some or one of whom 
 only are or is the true and first inventors or inventor; be it therefore 
 enacted and declared that it has been and is lawful tmder tlie principal Act 
 to grant such a patent. 
 
 Patent Eulbs, 1890. 6. (1.) An application for a patent containing the 
 declaration mentioned in sub-sect. 2 of sect. 5 of the Act of 1883, and sect. 2 
 of the Act of 1885 shall be made either in the Form A or the Form A 1 or the 
 Form A 2 set forth in the Second Schedule to these rules, as the case may be. 
 
 (2.) The Form B in such Schedule of provisional specification and the 
 Form C of complete specification shall respectively be used. 
 
 (3.) The remaining forms other than A, A 1, A 2, B and C set forth in the 
 Second Schedule to these Rules may, as far as they are applicable, be used in 
 any proceedings under these rules. 
 
 8. An application for a patent must be signed by the applicant, but all 
 other communications between the applicant and the comptroller and all 
 attendances by the applicant upon the comptroller -may he made by or 
 through an agent duly authorised to the satisfaction of the comptroller, and 
 if he so require resident in the United Kingdom. 
 
 9. The application shall be accompanied by a statement of an address to 
 which all notices, requisitions, and communications of every kind may be 
 made by the comptroller or by the Board of Trade, and such statement shall 
 thereafter be binding upon the applicant unless and until a substituted 
 statement of address shall be furnished by him to the comptroller. He may 
 in any particular case require that the address mentioned in this rule be 
 in the United Kingdom. 
 
 10. All documents and copies of documents, except statutory declarations 
 and affidavits, sent to or left at the Patent Office or otherwise furnished to 
 the comptroller or to the Board of Trade shall be written or printed in 
 large and legible characters, and, unless otherwise directed, in the English 
 language upon strong wide ruled paper (on one side only), of a size of 
 13 inches by 8 inches, leaving a margin of 2 inches on the left-hand part 
 thereof, and the signature of the applicants or agents thereto must be written 
 in a large and legible hand. Duplicate documents shall at any time be left, 
 if required by the comjitroUer. 
 
 11. Before exercising any discretionary power given to the comptroller 
 by the said Acts adversely to the applicant for a patent or for amendment 
 of a, specification, the comptroller shall give ten days' notice, or such longer 
 
APPLICATION FOE LETTERS PATENT. 37 
 
 notice as he may think fit, to the applicant of the time when he may- 
 be heard personally or by his agent before the oomptroUfir. Statutory declara- 
 tions and affidavits shall be in the form for the time being in use in the High 
 Court of Justice. 
 
 12. Within five days from the date when such notice would be delivered 
 in the ordinary course of post, or such longer time as the comptroller may 
 appoint in such notice, the applicant shall notify in writing to the comptroller 
 whether or not he intends to be heard upon the matter. 
 
 13. Whether the applicant desires to be heard or not, the comptroller 
 may at any time require him to submit a statement in writing within a time 
 to be notified by the comptroller, or to attend before him and make oral 
 explanations with respect to such matters as the comptroller may require. 
 
 14. The decision or determination of the comptroller in the exercise of 
 any such discretionary power as aforesaid shall be notified by him to the 
 applicant, and any other person affected thereby. 
 
 18. Applications for patents sent through the post shall, as far as may be 
 practicable, be opened and numbered in the order in which the letters contain- 
 ing the same have been respectively delivered in the ordinary course of post. 
 
 Applications left at the Patent Office otherwise than through the post shall 
 be in like manner numbered in the order of their receipt at the Patent Office. 
 
 19. Where a person making application for a patent includes therein by 
 mistake, iuadvertenee, or otherwise, more than one invention, he may, after 
 the refusal of the comptroller to accept such application, amend the same so 
 as to apply to one invention only, and may make application for separate 
 patents for each such invention accordingly. 
 
 Every such application shall, if the applicant notify his desire to that effect 
 to the comptroller, bear the date of the first application, and shall, together 
 therewith, be proceeded with in the manner prescribed by the said Act and by 
 these Rules, as if every such application had been originally made on that date. 
 
 20. An application for a patent by the legal representative of a person who 
 has died possessed of an invention shall be accompanied by an official copy of 
 or extract from his will, or the letters of administration granted of his estate 
 and effects in proof of the applicant's title as such legal representative, and 
 must be supported by such further evidence as the comptroller may require. 
 
 21. On the acceptance of a provisional or complete specification the comp- 
 troller shall give notice thereof to the applicant, and shall advertise such 
 acceptance in the official journal of the Patent Office. 
 
 22. Upon the publication of such advertisement of acceptance in the case 
 of an application with a complete specification,, the application and specifica- 
 tion or specifications with the drawings (if any) may be inspected at the 
 Patent Office upon payment of the prescribed fee. 
 
 23. An apphcation for a patent for an invention communicated from abroad 
 shall be made in the Form A 1 set forth in the Second Schedule to these 
 Eules. 
 
 Application generally^ 
 
 (h) Smith's Patent. [1884] 
 
 If at the end of a specification there is a real statement of the 
 invention claimed it is not competent to the Patent Office to 
 inquire whether the statement goes heyond or is in conformity 
 with the description in the specification of the invention. 
 (Griff. 268.) 
 
 (c) Brown's Patent. [1887] 
 
 The title being for "improvements in casks and tubs," the 
 specification described the invention as applicable to tubs and 
 
38 APPLICATION : 
 
 analogous vessels in which the staves were formed with a groove 
 for receiving the head : — Held, that the title was sufficient without 
 the words " and analogous vessels." 
 
 The patentee is entitled to frame his title in his own way pro- 
 vided he does not infringe the rules of the statute. (2 Griff. 1.) 
 
 (d) Everitt's Application. [1888] 
 
 The provisional specification only described a general principle 
 of obtaining automatically a given quantity of liquid in exchange 
 for a coin ; the complete specification described special mechanism 
 for efl'ecting it. The law officer allowed the patent, but stated 
 that if it were shewn in any case that, the applicant had made 
 use of other persons' specifications in drawing up his complete 
 specification, the complete specification would not be allowed. 
 (2 Oriff 27.) 
 
 (e) Atherton's Application. [1889] 
 
 The claims in a patent are inserted at the risk of the patentee, 
 because he jeopardises his patent by inserting too much ; but where 
 the sixth claim was practically identical with the third, the law 
 officer struck it out as unnecessary and misleading. An applicant 
 may insert what he believes to be a statement of prior knowledge, 
 but he must not give therein his own version of vrhat processes 
 have been described in former patents. If he wishes to refer to 
 such patents in connection with his statement of prior knowled'ge, 
 
 he should put the statement in this form : " Processes for 
 
 heretofore in use and to which I make no claim are Illus- 
 trations of such processes are to be found in the specifications 
 of " (6 0. E. 547.) 
 
 (/) C.'s Application. [1890] 
 
 The report of the examiner is not to fetter the judgment of the 
 comptroller, but to assist him, and if the comptroller sees, apart 
 from the report, that the specification is on its face insufficient, he 
 may require an amendment. (7 0. JR. 260.) 
 
 Application — Opposition. 
 
 Patents Act, 1883, sect. 11. (1) (Amended by 51 & 52 Vict. c. 50, 
 sect. 4). Any person may at any time within two months from the date of 
 the advertisement of the acceptance of a complete specification give notice at 
 the Patent Office of opposition to the grant of the patent on the groimd of 
 the applicant having obtained the invention from him, or from a person of 
 whom he is the legal representative, or on the ground that the invention has 
 been patented in this country on an application of prior date, or on the 
 ground that the complete specification describes or claims an invention other 
 than that described in the provisional specification, and that such other inven- 
 tion forms the subject of an application made by the opponent in the interval 
 between the leaving of the provisional specification and the leaving of the 
 complete specification, but on no other ground. 
 
 (2) Where such notice is given the comptroller shall give notice of the 
 opposition to the applicant, and shall, on the expiration of those two months, 
 after heaiing the applicant and the person so giving notice, if desirous of 
 being heard, decide on the case, but subject to appeal to the law officer. 
 
 (3) The law officer shall, if required, hear the applicant and any person 
 
Opposition. 39 
 
 so giving notice and being, in the opinion of the law officeri entitled to be 
 beard in opposition to the grant, and sball determine whether the grant 
 ought or ought not to be made. 
 
 (4) The law officer may, if he thinks fit, obtain the assistance of an expert, 
 who shall be paid such remuneration as the law officer, with the consent of 
 the Treasury, shall appoint. 
 
 Patent Eules, 1890. 34. A notice of opposition to the grant of a patent 
 shall be on Form D, and shall state the ground or grounds on which the 
 person giving such notice (hereinafter in Eules 37, 38, 41, and 43 called the 
 opponent) intends to oppose the grant, and shall be signed by him. Such 
 notice shall state his address for service in the United Kingdom. 
 
 85. On receipt of such notice the copy thereof shall be transmitted by 
 the comptroller to the applicant. 
 
 36. Where the ground or one of the grounds of opposition is that the 
 invention has been patented in this country on an application of jirior date, 
 the number, and date of such prior application shall be specified in the notice. 
 
 37. Within fourteen days after the expiration of two months from the' 
 date of the advertisement of the acceptance of a complete specification, the 
 opponent may leave at the Patent Office statutory declarations in support of 
 bis opposition, and on so leaving shall deliver to the applicant a list thereof. 
 
 38. Within fouiteen days from the delivery of such list the applicant may 
 leave at the Patent Office statutory declarations in answer, and on so leaving 
 shall deliver to the opponent a list thereof, and within fourteen days from 
 such delivery the opponent may leave at the Patent Office his statutory 
 declarations in reply, and on so leaving shall deliver to the applicant a list 
 thereof. Such last- mentioned declarations shall be confined to matters strictly 
 in reply. 
 
 Copies of the declarations mentioned in this and the last preceding Eule 
 may be obtained either from the Patent Office or from the opposite party. 
 
 39. No further evidence shall be left on either side except by leave of the 
 comptroller upon the written consent of the parties duly notified to him, or 
 by special leave of the comptroller on application in writing made to him 
 for that purpose. 
 
 40. Either party making such application shall give notice thereof to the 
 opposite party, who shall be entitled to oppose the apphoation. 
 
 41. On completion of the evidence, or at such other time as he may see 
 fit, the comptroller shall appoint a time for the hearing of the case, and shall 
 give the parties ten days' notice at the least of such appointment. If the 
 applicant or opponent desires to be heard, he must forthwith send the comp- 
 troller an application on Form B. The comptroller may refuse to hear either 
 party who has not sent such application for hearing. If neither party applies 
 to be heard, the comptroller shall decide the case and notify his decision to- 
 the parties. 
 
 42. On the hearing of the case no opposition shall be allowed in respect of 
 any ground not stated in the notice of opposition, and where the ground or 
 one of the groimds is that the invention has been patented in this coimtry on 
 an application of prior date, the opposition shall not be allowed upon such 
 ground unless the number and date of such prior application shall have been 
 duly specified in the notice of opposition. 
 
 43. Where the ground of an opposition is that the applicant has obtained 
 the invention from the opponent, or from a person of whom such opponent is 
 the legal representative, unless evidence in support of such allegation be left 
 at the Patent Office within the time prescribed by these Rules, the opposition 
 shall be deemed to be abandoned, and a patent shall be sealed forthwith. 
 
 44. The decision of the comptroller, after hearing any party who apphes 
 imder Eule 41, shall be notified by him to the parties. 
 
40 APPLICATION : 
 
 The following cases relate to prior public user, whicli was 
 formerly a bar to tbe grant of letters patent for an invention, but 
 appears to be no longer so under the Act of 1883. 
 
 In re Samuda ; In re Griffiths. [1846] (Cited Hindmarch, p. 534.) 
 In re Tolhausen's Patent. [1866] (14 W. B. 651.) 
 In re Vincent's Patent. [1867] (L. B., 2 Oh. 341.) 
 Hx parte Henry. [1872] (L. B., 8 Gh. 167.) 
 
 (g) Ex parte Henson, In re Alcock's Patent. [1832] 
 
 It was a matter of discretion with the Lord Chancellor whether 
 he would allow a person to oppose the sealing of letters patent 
 before him, when he had not already done so before the law ofScer, 
 (1 Weh. P. C. 432.) 
 
 (h) In re Cutler. [1839] 
 
 Semhle, the sealing of a patent will not be stopped merely on 
 the ground of the alleged want of utility. Because 1st. the 
 question cannot be successfully determined, and 2nd. if useless, the 
 patent, when granted, would be of no value. (1 Web. P. G. 426.) 
 
 (i) K. V. Cutler. [1847] 
 
 The effect of a caveat, lodged at the chambers of the Attorney- 
 General, was merely to entitle the party lodging it to notice. 
 (3 C. & K. 216.) 
 
 (f) In re Fawcett's Patent. [1862] 
 
 Where a caveat was lodged before the great seal was affixed 
 to a patent, the Lord Chancellor declined to enter into the merits 
 of the opposition, but referred the matter back to the Attorney- 
 General. (2 Be G., M. & G. 439.) 
 
 (¥) In re Campbell's Patent. [1863] 
 
 Service of a petition for sealing a patent upon the solicitor of 
 an opposiag party, who was out of the jurisdiction, granted. 
 (22 L. T. Bep. 93.) 
 
 (I) In re Eussell's Patent. [1857] 
 
 In general, where there is a doubt as to the validity of the 
 grounds of opposition to a patent, the proper course is to grant 
 the letters patent, as an error in refusing them would be irre- 
 mediable, while one in granting them would not. (2 De G. & J. 
 130.) 
 
 (m) In re Spence's Patent. [1859] 
 
 Unless a patent is clearly bad, the Lord Chancellor will not 
 refuse to seal it, as the effect of such refusal, if erroneous, would be 
 irremediable, whereas the sealing a bad patent leaves every one 
 at liberty to dispute it. (3 Be G. & J. 523.) 
 
Opposition. 41 
 
 («) In re McKean's Patent. [1859] 
 
 Where a petition to have the great seal affixed had been filed 
 and the respondents served with notice two months before the first 
 day of Michaelmas term, for which day the petition was answered, 
 and the respondents only filed affidavits on the morning of that 
 day : — Seld, that they conld not be read ; and the patent was 
 ordered to be sealed. (1 Be G., F. <& J. 2 ; 8W.B. 1; 1 L. T., 
 N. S., 19.) 
 
 (o) In re Brennand's Patent. [1861] 
 
 Leave was given to oppose th^, granting of letters patent, not- 
 withstanding the time for entering an opposition had expired, the 
 reason for the delay in entering such opposition being accounted 
 for, and the matter was referred back to the Attorney-General. 
 (7 Jur., N. S., 690 ; 4 L. T. £ep., N. S., 456.) 
 
 (p) In re Heathorn's Patent. [1864] 
 
 Since the passing of 15 & 16 Vict. c. 83, the practice of entering 
 caveats is discontinued unless special leave is obtained, and, there- 
 fore, the Lord Chancellor sealed a patent, notwithstanding a 
 caveat was standing against it, no leave having been obtained. 
 (10 Jur., N. S., 810 ; 10 L. T. Rep., N. S., 802.) 
 
 (g) In re Mitchell's Patent ; In re Brotherton's Patent. [1867] 
 
 A party who has not opposed the sealing of a patent before the 
 
 law officer of the Crown under 15 & 16 Vict. c. 83, sect. 12, was not 
 
 allowed to oppose before the Lord Chancellor, (i. M., 2 Ch. 343.) 
 
 (r) In re Vincent's Patent. [1867] 
 
 A person might give notice of objection, and oppose the sealing 
 of a patent before the Lord Chancellor without previously apply- 
 ing to the Court for leave to enter opposition. The Lord Chan- 
 cellor, on an application for sealing a patent, would not interfere 
 with the decision of the law officer of the Crown, unless in case 
 of fraud or surprise, or of some material fact having come to the 
 knowledge of the party since the case was before the law officer. 
 (L. B., 2 Ch. 341 ; 15 W. B. 524.) 
 
 (s) Ex parte Sheffield. [1872] 
 
 In opposing the grant of letters patent, the burden is on the 
 opponent to shew that the grant would be clearly wrong. Where 
 the facts on which the opponent relies were within his knowledge 
 when he opposed before the law officer, he could not, when before 
 the Lord Chancellor, raise a new legal argument on these facts ; 
 nor could he then bring forward evidence which he might have 
 brought before the law officer, (i. B., 8 Ch. 237; 42 L. J. 
 Ch. 356.) 
 
 (f) In re GtETHING. [1874] 
 
 Where rival applicants had applied on the same day for patents, 
 and had afterwards mutually agreed to withdraw opposition, 
 
42 APPLICATION : 
 
 letters patent bearing date the day of application were granted to, 
 one applicant, although letters patent bearing that date had 
 already been granted to the other. (L. B,., 9 Ch. 633.) 
 
 (m) In re Johnson's Patent. [1878] 1 
 
 In re Somerset and Walker's Patent. [1879] ) 
 
 The word caveat in 15 & 16 Vict. c. 83, sect. 20, meant any- 
 thing in the nature of opposition at any stage : — Held, accordingly, 
 that where opposition had been entered, the Lord Chancellor had 
 power to extend the time for filing the final specification beyond 
 one month after the term of provisional protection. (18 Ch. D. 
 397.) 
 
 («) Heath and Frost's Patent. [1886] 
 
 Patent for improvements in blasting cartridges opposed by 
 Hardin gham on the ground that the invention had been previously 
 patented hy McNab. Hardingham's only interest was as patent 
 agent of McNab. The law officer held that Hardingham could not 
 be heard, as by sect. 11 of the Patents Act, 1883, the only class 
 entitled to be heard in opposition before the law officer are persons 
 who are interested with a legitimate and real interest in the prior 
 patent upon which an application is opposed, or persons who, while 
 they have not patented the invention, have yet been the originators 
 of it, from whom the person seeking the patent has obtained it. 
 {Griff. 288.) 
 
 (mi) Spiel's Application. [1888] 
 
 The opponents were the assignees of patents taken out by 
 Johannes Spiel and of all improvements thereon, and they alleged 
 that the present applicant, Adolf Spiel, was put forward by his 
 brother Johannes in order to prevent them (the opponents) from 
 getting the benefit under the assignment of the proposed patent 
 for improvements : — Held, by the Comptroller-General, that he had 
 no jurisdiction to enter into the circumstances under which the 
 applicant became possessed of the invention. On appeal Clarke, 
 S.G., held that even if the opponents proved the fraud they 
 were not the legal representatives of Johannes Spiel and there- 
 fore could not oppose. (5 0. B. 281.) 
 
 (x) Airey's Application. [1888] 
 
 The notice of opposition in this case contained the number and 
 date of the patent as required by the Act, but not the title also as 
 required by the rules. The ComptroUer-General allowed the 
 opponent to amend, and said that he had no power to impose terms. 
 (5 0. B. 348.) 
 
 (y) Daniel's Application. [1888] 
 
 Opposition successful. Under sect. 7 (6) of the Act of 1883 
 and rules 11, 12, 13 & 15 of the Eules of 1883, the Comptroller- 
 General has power to hear and determine whether the applicant's 
 invention and the prior patent are the same irrespective of any 
 
Opposition — Invention obtained from Opponent. 43 
 
 opposition, and therefore it is not ultra vires for him to allow the 
 opponent to amend his notice of objections. (5 0. B. 413.) 
 
 Opposition on the ground that the Invention was obtained from the 
 
 opponent. 
 (z) In re Fox. [1812] 
 
 The owners of a patent opposed the grant of a patent for 
 improvements therein, on the ground that the alleged invention 
 was borrowed from their patent. The resemblance of the two 
 inventions was denied. The Lord Chancellor sealed the patent. 
 (1 Web. P. a 431 ; 1 V.d B. 67.) 
 
 (a) Ex parte Henson, in re Alcock's Patent. [1832] 
 
 On affidavit that an invention, for which letters patent were 
 about to be sealed, is the invention of the deponent, and had been 
 obtained by a breach of confidence, the Lord Chancellor allowed 
 an opposition at the great seal, though the opponent had not 
 opposed the grant before the law officer. The Lord Chancellor 
 holding that the parties under the circumstances ought to be 
 heard, but that such right ought to be exercised exceedingly 
 sparingly, he referred the matter to the Attorney-General. 
 Cl Web. P. 0. 432.:) 
 
 (V) Lott's Application. [1853] 
 
 This application was refused by the Lord Chancellor on the 
 ground that Lott had obtained the main idea of the invention 
 from Hadden, who had previously lodged a provisional specifica- 
 tion. (John, 168.) 
 
 (c) In re Eussell's Patent. [1857] 
 
 Where it appeared that a master and his foreman had both 
 invented certain improvements, for which the master sought 
 letters patent : — Held, that they ought only to be granted on the 
 terms of their being vested in trustees for the master and the 
 foreman. (2 Be G. & J. 130.) 
 
 ,-,. J Healey's Application. 1 p,g„2-i 
 '^ ^ [Conniff's Application./'- ^ 
 
 Coleridge, S.G., granted a warrant to servants for inventions 
 the results of experiments paid for by their employers, the oppo- 
 nents, on condition that the provisional specifications should be 
 submitted to the opponents, and the portions objected to struck 
 out. {John, 165.) 
 
 (e) Abel's Application. [1876] 
 
 The law officer will not look at the circumstances under which 
 an importer of an invention has obtained it abroad. (John, 169.) 
 
 (/) Macfaelane's Application. [1883] 
 
 The company of which Macfarlane was manager successfully 
 
44 APPLICATION : 
 
 opposed on the ground that the invention was obtained from their 
 engineer and chemist. {John, 168.) 
 
 (c) HosKiNs's Patent. [1884] 
 
 Patent for improvements in folding cots and hammock frames 
 opposed by Needham on the ground that the applicant had 
 obtained the invention from him and that he had previously 
 patented it. A firm with which Needham was negotiating as to 
 a licence had sent a specimen cot with some alterations from 
 Needham's specification to a firm of which Hoskins was a member, 
 for the purpose of ascertaining a price. Hoskins sent back a 
 manufactured sample which was returned to him for alterations 
 and again returned by him. Shortly afterwards Hoskins applied 
 for this patent which Needham alleged was substantially for the 
 same invention as his. 
 
 Heischell, S.Gr. : " I do not think that this patent can be allowed 
 to go except as an improvement on the opponent's. It is 
 impossible to shut one's eyes to the fact that this improved cot 
 which Hoskins seeks to patent never would have been seen or 
 heard of had not Hoskins had before him Needham's cot. . . . 
 The parts differ and the mode of carrying out the idea differs, but 
 there is not a single idea to be found in the one that is not to be 
 found in the other arrangement modified. . . . Can I allow, not 
 as being an improvement or modification of the prior patent, but 
 as an independent patent which the person taking it out is 
 entitled to work independently, this apparatus or cot? I am 
 satisfied that I cannot. I am satisfied, moreover, that I should be 
 doing a very cruel kindness to Hoskins were I to allow him a 
 patent on his present specification, because 1 am satisfied there is 
 neither any judge nor any jury who would not hold he was 
 infringing Needham's patent, and therefore I should not be giving 
 him any advantage. . . . No doubt the applicant did apply a 
 considerable amount of original thought, and I am quite prepared 
 to believe invention, in improving the opponent's and making a 
 better cot, . . . and so far, as he has made it better, he is entitled to 
 a patent for the improvement. ... I allow the grant on condition 
 that Hoskins inserts in his complete specification a statement that 
 his invention is an improvement upon Needham's." (Griff. 291.) 
 
 (d) Eadie's Patent. [1886] 
 
 Application for patent for improvements in travellers opposed : 
 (1) by Bourcart on the ground that a material part of the invention 
 had been obtained from him ; (2) by Clark on the ground that he 
 had already patented a material part on communication from 
 Bourcart. The Comptroller-General was of opinion that the 
 applicant's specification was based upon the idea of a traveller with 
 a straight part first communicated to them by Bourcart, and sealed 
 a patent to Messrs. Eadie and Bourcart as joint inventors. 
 {Griff. 279.) 
 
 (e) Evans and Otway's Patent. [1885] 
 
 The evidence being conflicting, the Deputy Comptroller having 
 
Opposition — Invention obtained from Opponent. 45 
 
 no power to take evidence viva voce sealed a patent •withont 
 prejudice to tlie opponent on appeal. It appeared that Evans and 
 the opponent Cutting had heen jointly experimenting upon the 
 invention, and Cuttipg had obtained a patent for the invention 
 vrithout opposition from Evans. The law officer decided that 
 Evans should have a patent on each of the two assigning one 
 half of his patent to the other ; but on its appearing that Otway 
 could not be found to agree to this, the order was cancelled, and 
 instead it was ordered that the application should be refused on 
 the terms that Cutting should assign one half of his patent to 
 Evans, the parties thereafter to share in paying the fees, or in 
 default, either party to be at liberty to pay and to retain the 
 patent as security for repayment of his share. {Griff, 279.) 
 
 (/) Gtarthwaite's Patent. [1886] 
 
 Patent for fish biscuits for dogs held to be the joint invention ot 
 the applicant and King the opponent. King applied for a patent for 
 an invention which appeared to the examiner to be the same, but 
 the applicants thinking them different, asked the comptroller 
 to issue a patent on Garthwaite's application to them jointly, and 
 to grant King a patent, striking out all matter covered by 
 Garthwaite's specification. The Comptroller-General refused to 
 do this, but granted separate patents on each assigning one half to 
 the other and agreeing to pay half the fees. {Griff. 284.) 
 
 (/ 1) Luke's Patent. [1886] 
 
 It appeared that part of the merit of the applicant's invention 
 for improvements in machines for slubbing, roving, &c., fibrous 
 materials was due to the opponent. The law officer, following the 
 precedent set in Eussell's patent (p. 43 (c) ), ordered the grant on 
 condition that the parties should agree, the patentee to secure to 
 the opponent the rights of a joint patentee, the opponent to 
 undertake to take no proceedings for revocation of the patent. If 
 the applicant refused to agree, the application was to be dismissed 
 with costs ; if the opponent refused to agree, the grant was to be 
 allowed unconditionally with costs. {Griff. 294.) 
 
 {g) Pateeson's Patent. Iriggg-i 
 Dundon's Patent. j '- ^ 
 
 In 1884 Paterson applied for a patent for improved apparatus for 
 expanding the ends of casks and firkins, leaving a provisional 
 specification in which was described a firkin expander, consisting 
 of segments not overlapping. On June 5, 1886, Dundon applied for 
 a patent, leaving a provisional specification which shewed a firkin 
 expander, consisting of a hoop with the ends overlapping. On 
 July 29, 1886, Paterson filed his complete specification and therein 
 included Dundon's overlapping band. Each one opposed the 
 other's patent on the ground that it had been obtained from him. 
 Dundon's application was granted, and Paterson was required to 
 amend by confining his complete specification to the hegmental 
 apparatus. {Griff. 296.) 
 
46 APPLICATION : 
 
 (A) David and Woodi.ey. [1886] 
 
 Davey, S.G. : " If a workman is employed by an inventor to 
 make a model for the purpose of carrying out his invention, and 
 the woikman suggests improvements in detail of the machine, 
 which are adopted in the machine or model as completed, those 
 suggestions are the property of his employer, and the workman 
 cannot afterwards take out a patent for them." (2 Griff. 26.) 
 
 (i) Edmund's Patent. [1886] 
 
 Query, whether the words "legal representative" in sect. 11 
 of the Patents Act, 1883, include a person holding a power of 
 attorney. 
 
 The words " on the ground of the applicant having obtained the 
 invention from him," in this section are intended to apply to com- 
 munications between persons in the United Kingdom and Isle of 
 Man, and not to communications from abroad. The person import- 
 ing an invention into the realm is the true and first inventor, and 
 for the purposes of the application it matters not under what cir- 
 cumstances he has obtained the invention abroad, and this is not 
 altered by the Act of 1883. The importer may be liable to the 
 person from whom he has obtained the invention abroad in respect 
 of the breach of some contract or duty, but those are matters which 
 the law officer and the Comptroller-General cannot inquire into. 
 {Griff 281.) 
 
 (_/■) Fiechtee's Application (referred to in Edmund's patent). 
 
 Application for a patent for improvements in dust-collecting 
 apparatus. A communication from Kirk and Fender of Ameiica 
 refused on the ground that Fiechter never had authority from 
 Kirk and Fender to applj' for a patent, he having offered to become 
 their agent in England and been refused. (Griff. 284.) 
 
 (Ic) Lake's Application (Edmund's patent followed). [1888] 
 (6 0. B. 415.) 
 
 (kP) Newman's Application (2). [1888] 
 
 The remarks of Lord Herschell in Hoskins' patent (p. 44 (c) ) 
 approved by Webster, A.G. It is not to the interest of the 
 patentee or of the public that the description of an invention 
 should be general when it can only be supported as a description 
 of an improvement. (5 0. iJ. 279.) 
 
 (I) Marshall's Application. [1888] 
 
 The invention was admittedly obtained from the opponent, but 
 the applicant alleged that the opponent went with him to a 
 patent agent and instructed him to make the application, and 
 suggested that it should be in the name of the applicant only. The 
 application was refused. (5 0. B. 661.) 
 
 (m) Homan's Application. [1888] 
 
 The applicant, who had previously obtained a patent for 
 
Opposition— Invention patented in England. 47 
 
 improvements in fire-proof floors, now applied for a further patent 
 for improvements in fire-proof floors in whicli bricks of a particular 
 construction were to be used, and were separately claimed as new. 
 The opponent, who had formerly been employed by the applicant 
 in making samples of bricks for experimental purposes, had already 
 registered as a design the same form of brick : — Held, by the law 
 officer that the applicant was the person entitled to claim originality 
 in the matter, and was entitled to a patent without amendment 
 and without joining the opponent. (6 0. B. 104.) 
 
 (n) Griffin's Application. [1889] 
 
 The application was refused on the ground that the invention 
 had been obtained from the opponent. (6 0. B. 296.) 
 
 (o) DiETz's Patent. [1889] 
 
 The patent was allowed, and the opponent not appearing, his 
 appeal was dismissed with costs. (C 0. B. 297.) 
 
 Application — Opposition on tlie ground that the Invention has been 
 patented in this country. 
 
 (j>) In re Stoll's Patent. [1863] 
 
 An application for the sealing of a patent which, with the 
 consent of the petitioner and the opposing party, the Lord 
 Chancellor had referred to the Assistant Commissioner in the 
 Patent Oflice for his opinion as to whether there was an infringe- 
 ment of a patent already granted, was, upon that oiEcer's opinion 
 being imfavourable to the petitioner, refused. (21 L. T. Bep. 
 233.) 
 
 {q) In re Tolson's Patent. [1866] 
 
 Letters patent sealed in a case where the evidence showed great 
 similarity between the alleged invention and one for which a 
 patent was already in force. (6 De Q., M. & G. 422.) 
 
 (r) Ex parte YA.TI.S. [1869] 
 
 The patent was refused on the ground that the invention was a 
 colourable imitation of one which was the subject of an existing 
 patent, (i. B., 5 Gh- 1.) 
 
 s) In re Manceaux's Patent. [1870] 
 
 Letters patent will not be sealed where a prior patent has been 
 granted for the same invention, and there is no fraud, altiiough 
 the validity of the first patent is disputed. (L. B., 6 Ch. 272 ; 18 
 W. B. 1184.) 
 
 {f) In re SooTT AND Young's Patent. [1871] 
 
 Whether an objection to the sealing of a patent, on the ground 
 of a prior patent having been granted, can be made where no 
 complete specification of the prior patent has been filed, qusere. 
 (18 W. iJ. 425.) 
 
48 APPLICATION" : 
 
 Who may oppose, 
 (ii) Glossop's Patent. [1884] 
 
 A manufacturer who has purchased a prior patent which is 
 alleged to be an anticipation, and has been working under it, has a 
 right to be heard in opposition although his patent has become 
 public property. Quaere, whether one of the public is entitled to 
 be heard. (Griffin, 285.) 
 
 (y) Lancaster's Patent. [1884] 
 
 Opposition may be grounded on a patent which has expired. 
 {Griff. 293.) 
 
 (w) Hookham's Application. [1886] 
 
 Glossop's case approved. A person who merely comes forward 
 as one of the public will not be allowed to strike out a paragraph 
 of a specification on the ground of a prior patent. (2 Grif. 32.) 
 
 (a;) Dundon's Patent. [1886] 
 
 Qusere whether an applicant, whose patent has not been sealed, 
 has a locus standi to oppose. {Griff. 278.) 
 
 (y) Green's Patent. [1886] 
 
 The parts in the applicant's specification which were objected 
 to by the opponents were included in the opponent's complete, but 
 it was alleged not in their provisional specification -.—Meld, that 
 this variance, if proved, would not prevent the opposition from being 
 successful. {Griff. 286.) 
 
 (z) Bailey's Patent. [1886] 
 
 The words "patented in this country," in sect. 11 (1) of 
 Patents Act, 1883, do not include inventions which have only 
 received provisional protection, and consequently the existence of 
 such inventions is not a ground of opposition. {Griff. 269.) 
 
 (a) L'OlSEATJ AND PiERAEd's APPLICATION. [1887] 
 
 A patentee who has lodged a provisional specification and has 
 left a complete specification which has been accepted is entitled to 
 oppose, although no patent has been granted, by virtue of sect. 15 
 of the Patents Act, 1883. (2 Griff. 36.) 
 
 (6) Evekitt's Application. [1888] 
 
 A foreign patentee who is entitled to have his patent antedated 
 under sect. 103 of the Patents Act, 1883, so as to be prior in date 
 to an application, is not entitled to oppose the application on the 
 ground that the invention had been patented by him on an appli- 
 cation of prior date. (2 Griff. 28.) 
 
 (c) Hall and Hall's Application. [1888] 
 
 Patent opposed on the ground (amongst others) that an invention 
 which was patented by the opponent in 1871 would come within 
 
Opposition — Insertion of Disclaiming Clause. 49 
 
 tke general terms of the fourth claim : — Seld, that this was so, and ' 
 that the fact that the patent of 1871 had expired was rather a 
 reason for mentioning it than for not mentioning it in the speoifi- : 
 cation. (5 0. B. 283.) 
 
 (d) MacEvoy's Application. [1888] 
 
 A person who has no interest in prior patents, except that he ■ 
 has manufactured under one of them, is not entitled to oppose on 
 the ground of the inyention being comprised in such prior patents. 
 (5 0. B. 285.) 
 
 (e) Baiestow's Application. [1888] 
 
 The Comptroller-General, under sect. 11 of the Patents Act, 
 1883, cannot inquire into the means by which the applicant has 
 obtained an invention abroad. A person -who is going to work 
 the invention contained in prior patents is not entitled to oppose 
 on the ground of such patents existing. (5 0. B. 286.) 
 
 (f) Webster's Application. [1888] 
 
 The inventions claimed were : (1) In the manufacture of wire 
 ropes the improvements consisting in making all the strands com- 
 pound, i.e. each strand having some of its wires laid in one direction 
 and the rest in the other. (2) The laying up into a rope compound 
 strands either (a) all having thin external wires in the same 
 direction as the lay of the rope, (&) all except one, or (c) with the 
 direction of the external wires to the right and left hand alternately : 
 — Held, that if the compound strand was new, it was amply protected 
 by the first claim, and that if it was not new, the specification did 
 not purport to disclose any invention in the mode of laying up an 
 old strand, and that therefore the second claim was not required 
 and must be struck out. 
 
 Webster, A.G. : " Where a patentee, upon the face of both the 
 provisional and final specification, has disclosed a new element . . . 
 and proceeds to use that in an old way without indicating any 
 invention in the mode of use, any person who has a patent or is 
 interested in a patent for the old way has a right to come forward 
 and say. This is a claim which ought not to be inserted. in the 
 specification unless there is a distinct claim to invention in the 
 way in which this is proposed to be applied." (6 0. B. 163, at 
 p. 165.) 
 
 Insertion of disclaiming Clause. 
 
 (g) Teague's Patent. [1885] 
 
 The applicant described and showed on his drawings certain 
 parts of a rock drill which were protected by the opponent's patent. 
 The opponent was allowed to elect whether he would have those 
 parts struck out or a disclaiming clause inserted. (Griff. 298.) 
 
 (K) Welch's Patent. [1385] 
 
 Application for patent for making bricks, &c., from refuse 
 slate opposed on the grouad of a prior patent for a similar process 
 
50 APPLICATION : 
 
 existing, but allowed with a clause mentioning the prior patent, 
 and expressly disclaiming any claim to the process therein de- 
 scribed. (Griff. 300.) 
 
 (j) CooPEE AND Ford's Patent. [1886] 
 
 The applicant described in his specification certain improvements 
 in knitting machinery and certain frictional driving gear, which 
 latter had been already patented by the opponent. The patent 
 was allowed after the insertion of a clause stating that no claim 
 was made to the driving of the shaft, " as friction driving appa- 
 ratus of this kind has before been used for driving the shafts of 
 knitting machines." {Griff. 275.) 
 
 (J) Anderson and McKinnell's Application. [1887] 
 
 The opponent's machine was materially different from the 
 applicant's. The Solicitor-General said : " Of all waj-s of protecting 
 pre-existing arrangements in matters of this kind, the one I 
 should be the least willing to adopt would be the mention in one 
 specification of the fact of another patent being in existence." 
 {i Griff. 23, at p. 25.) 
 
 (it) Hookham's Application. [1887] 
 
 Semhle, if there is a distinct reference in the provisional specifi- 
 cation to an invention or a device which was within the specifica- 
 tion of the opponent, the opponent may be entitled to have a 
 disclaimer inserted. (2 Griff. 32.) 
 
 (T) Loreain's Application. [1888] 
 
 Where a patent is opposed on the ground of a prior patent 
 having been granted for the same invention, no harm is done to 
 the owners of the prior patent by allowing the specification in a 
 particular form, but the law officer is bound to protect the 
 public, so that they may not be misled by any specification which, 
 on the face of it, might be held to include a wider kind of in- 
 vention than that to which the patentee is on the evidence 
 entitled. (5 0. B. 142.) 
 
 (m) GtJEST AND Baeeow's Application. [1888] 
 
 A prior patentee has not any right to be specially named unless 
 the applicants are willing to name him, and unless it is clear that 
 there is no other publication except the one that is mentioned. 
 
 The applicant's provisional specification admittedly covered the 
 opponent's invention, and the applicant, before the Comptroller- 
 General, inserted a disclaimer as to the general state of knowledge ; 
 — Held, on appeal, that that was sufficient. 
 
 Where a particular patentee or a prior inventor has made 'a 
 broad general claim, he is not on that account entitled to have 
 limiting words inserted in the applicant's patent, unless 'he can 
 shew that such words are really necessary to protect him (5 B 
 312.) 
 
Opposition — Insertion of Disclaiming Clause, 51 
 
 (w) Airey's Application. [1888] 
 
 The Solicitor-General settled the disclaimer in the followiilg 
 form : " I am aware of (the opponent's) patent No. 4726 of 1886 
 for ' Machine for measuring the height of Human Beings auto- 
 matically,' and I declare that I do not claim the mechanism 
 therein described and claimed, hut what I claim is," &c., &c. 
 (5 0. B. 348, at p. 350.) 
 
 (o) Gozney's Application. [1888] 
 
 A disclaiming clause inserted on opposition is intended to guard 
 against the claiming in a new patent something not only described 
 in the old patent, but included in the claim in the old patent as a 
 part of the previous invention. (5 0. B. 697.) 
 
 (j>) Hill's Application. [1888] 
 
 If patents overlap, the distinction between the inventions in the 
 earlier and later patents should be made clear for the sake of the 
 public. (6 O. B. 599.) 
 
 (q) Sielaff's Application. [1888] 
 
 The Attorney-General approved of the remarks made by the 
 Solicitor-General in Anderson and McKinnell'a application. (5 0. B. 
 
 485.) 
 
 (r) Lynde's Application. [1888] 
 
 Disclaimer ordered : " I am aware of (the opponent's) patent 
 No. 16,433 of 1884, and do not claim anything claimed and 
 described therein." (5 0. B. 663, at p. 665.) 
 
 (s) Wallacy's Application. [1889] 
 
 The applicant stated in his specification that the operation of 
 the weighing mechanism was substantially the same as that 
 described in his former patent, and in his former patent a reference 
 was made to the opponent's patent : — Seld, that a similar reference 
 must be inserted, and the form used in Lynde's Case was followed. 
 (6 0. B. 134.) 
 
 (<) Brownhill's Application. [1889] 
 
 An opponent may appeal in order to get a reference to his 
 specification inserted, although he does not appeal against the 
 allowance of the patent. (6 O. B. 135.) 
 
 (u) Hoffman's Application. [1890] 
 
 The disclaiming clause serves two useful purposes, one to protect 
 the former inventor, and the other to protect the new inventor by 
 limiting his claim, thus showing that his patent is not assailable 
 on the ground that it is an infringement on the former patent. 
 
 (7 0. B. 92.) 
 
 ^ E 2 
 
52 APPLICATIO]S[ : 
 
 Where prior Invention is not the same, 
 (u) iltJTH's Patent. [1884] 
 
 . An application for a patent for improvements in the mamifacture 
 of compounds of india-rubber, gutta-percha, and like materials, 
 opposed on the ground that the invention had been already 
 patented, but granted on the ground of a substantial difference in 
 the ingredients used. (Griff. 292.) 
 
 (») Cumming's Patent. [1884] 
 
 A patent for an improved fastener for bracelets allowed, although 
 the difference from the invention already patented by the opponent 
 ■was very slight. (Griff. 277.) 
 
 (w) Stubb's Patent. [1886] 
 
 The law officer will not stop a patent which is opposed on the 
 ground that a prior patent exists unless he is satisfied that the 
 patents are identical. (Griff. 298.) 
 
 (x) Jones's Patent. [1886.] 
 
 . It is not sufficient that the invention proposed should be sub- 
 stantially the same as that of the opponent ; it must be identical : — 
 Held, therefore, that a notice which included the words " sub- 
 stantially the same " was wrong, because it raised a question of 
 infringement which the law officer had no power to decide. 
 (2 Griff. 33.) 
 
 (y) Newman's Application. [1887] 
 
 An opponent who owned a similar patent of prior date raised the 
 objection that the applicant's claim went beyond the title and the 
 provisional specification. If the applicant has good subject-matter, 
 and the invention is not identically the same as that of the 
 opponent, the applicant is entitled to have his patent sealed, though 
 an action for infringement may be with success bruught by the 
 opponent. The law officer will not stop a patent at the instigation 
 of an opponent because there is some general principle of patent 
 law which is infringed, although it may be reasonable for the law 
 officer to indicate to the applicant that it would be well to 
 consider such a point. (2 Griff. 40 ; 5 0. B. 271.) 
 
 (z) VoN BtroH's Application. [1887] 
 
 The opponents, the Welsbaoh Incandescent Light Company, 
 had described in their patent the method of making the incan- 
 descent envelope which the applicant now sought to patent ; but 
 they had not claimed it as part of their invention : — Held, that as 
 only that is patented which the inventor claims, this portion of 
 the invention could not be said to have been patented within the 
 meaning of sect. 11, and that therefore the application must be 
 granted. (2 Griff. 40.) 
 
Opposition where prior Invention is not the same. 53 
 
 (a) Chandler's Patent. [1887] 
 
 Where the Comptroller-General found sufficiently indicated oh i 
 the documents before him what was the particular invention for 
 which a patent was desired, and what was the chief feature in 
 which it differed from those of the opponents — viz., the special , 
 form of gas-burner by which the gas issued vertically, and was 
 caused to meet, end on, heated air issuing vertically downwards — 
 he allowed the applicant to amend by confining his claim to such j 
 special feature. In such a case the time for appeal to the law 
 officer runs from the time when the amendments are approved by , 
 the comptroller. {Griff. 270.) 
 
 (6) Fletcher's Application. [1887] 
 
 In this case a method of dyeing tissue and other papers by' 
 pressing the colouring matter through the same by means of a 
 pair of pressure rollers while supported by an endless felt cloth,' 
 and apparatus, were held to be substantially different from a pre- 
 viously patented process of colouring paper by saturating it by 
 passins; through a bath and apparatus, and the patent was allowed. 
 (2 Griff. 30.) 
 
 (c) Wallis and Eatcliff's Application. [1888] 
 
 The application was allowed by the Comptroller-General, but 
 was refused on appeal by the Attorney-General on the ground 
 that the apparatus in question did not substantially differ from 
 that already patented by the opponent. (5 0. B. 347.) 
 
 (d) Lake's Application. [1889] 
 
 There being a strongly controverted question of anticipation by ' 
 former specifications concerning the manufacture of alpha naphthoL 
 disulpho acids for dyes, the Solicitor-General declined to have an 
 expert assessor, on the ground that, even if advised by an expert, 
 he would not think it right to stop the patent where there was' 
 such a contest. (6 0. B. 648.) 
 
 (e) Fawcett's Application. [1889] 
 
 The application being opposed on the ground that " the invention 
 or material parts thereof had been patented in this country on 
 applications of prior date," the words "or material parts" thereof " 
 were objected to and, by leave of the comptroller, were struck 
 out. (Good. Prac. 10.) 
 
 (/) Hatthoenthwaite's Application. [1889] 
 
 In considering what is the invention in the prior patent, the law' 
 officer will not consider whether there is a variance between the 
 opponents' provisional and complete specifications. (7 0. B. 70.) 
 
54 APPLICATION. 
 
 Concurrent Applicants. 
 
 (f) Ex parte tiYm. [1812] 
 
 Where there were concurrent applications for letters patent for 
 the same object, he who obtained the great seal first, by getting 
 quickest through the various stages, had the sole right at law. 
 {Eolroyd, 59.) 
 
 (gr) CoENiSH V. Keene. N. p. [1835] 
 
 Tindal, C.J. : " The first who comes to the Crown and takes out 
 a patent is the man who has a right to clothe himself with the 
 authority of the patent, and enjoy its benefits." (1 Web. P. C. 
 508.) 
 
 (h) In re Simpson and Isaacs' Patent. [1853] 
 
 Objections were filed to an application for a patent, and were 
 overruled by the law officer of the Crown ; he issued his warrant 
 to seal, to which also objections were filed. On a petition by the 
 patentees, the Court made an order to affix the great seal without 
 sending the case back to the law officer. 
 
 The Lord Chancellor said: "I think that Lord Eldon was 
 correct in Dyer's Case. I shall follow the rule which he there 
 laid down. In that case both parties invented the same thing at 
 the same time, and the question was, who was to be preferred, the 
 first who applied for, or the first who obtained, the patent ? His 
 lordship decided in favour of the latter. In that case the patentees 
 first applied, and the Act means to put the order for protection 
 granted at the time of the application on the same footing as the 
 patent stood before ; you are therefore the first entitled. I am of 
 opinion, too, that you are entitled to have the patent sealed. No 
 doubt, in advising the Crown to seal letters patent, I ran the risk 
 of occasioning great injury to parties, by driving them into litiga- 
 tion ; but by the contrary course I run the risk of doing irreparable 
 injury. In my opinion, the question is the same as if, under the 
 old law, application were being made to me for letters patent to be 
 granted at the time when the application for this patent was 
 made. This application is rested on two grounds : first, that these 
 patentees are not the true inventors ; secondly, that the invention 
 is not new. I am quite ready to say that I think there is strong 
 evidence that it was not ; but I shall not take upon myself so to 
 
 decide I think I am bound to decide myself, not whether 
 
 they have made out that they are the true inventors, and that the 
 invention is new, but whether such a prima facie case has been 
 made that I ought to put them into a position to litigate the 
 question with the public." (21 L. T. Bep. 81.) 
 
 (i) Heath v. Smith. [1854] 
 
 Campbell, C.J. : " When I was Attorney-General, and it ap- 
 peared that there were two contemporaneous discoveries, I used to 
 give a patent to the two jointly." Sir A. E. Cockburn, Attorney- 
 General : " I have adopted the same practice, but I have found 
 
Concurrent Affliccmts. 55 
 
 parties ordinarily nn willing to accept patents on sucb- terms.'' 
 (2 Weh. P. a 271.) 
 
 (/) In re Lowe's Patent. [1856] 
 
 L. and W. -were joint patentees of an invention for propelling 
 vessels, and whilst engaged in making experiments with regard 
 to it an accident happened, which appeared to have suggested 
 to each an improvement upon the method previously adopted. 
 They communicated their ideas to each other, but neither took 
 any steps to secure the benefit of the invention for two years, 
 when L. applied for a patent, against the sealing of which W. 
 entered a caveat, on the ground that he (W.) was the first 
 inventor. The evidence on this point being conflicting: — Held^ 
 that L., having first applied, was entitled to have his patent 
 sealed, though possibly W. might be able to get it repealed upon 
 scire facias. (25 L. J., Oh. 454.) 
 
 (j^) Craig and Macpaelane's Applications. 
 
 Coleridge, S.-G., being satisfied that one of the applicants was 
 entitled to one part of the invention whilst the other could more 
 fairly claim another part, issued his warrants to both limiting the 
 provisional specifications accordingly. {John, 165.) 
 
 (k) In re Bates and Eedgate's Application. [1869] 
 
 The existence of a prior provisional specification is not a ground, 
 in the absence of fraud, on which the Attorney-General ought to 
 . refuse to allow a second provisional specification by another in- 
 ventor to be filed ; and, in the event of the later applicant for 
 provisional protection being the first to obtain a grant of letters 
 patent, his patent is a bar to the grant of letters patent for the 
 same invention to the earlier applicant for such provisional pror 
 teotion. (i. B., 4 Ch. 577 ; 38 i. J., Ch. 501.) 
 
 (Z) ^a; jparfe Manceaux. [1870] 
 
 Where the law officer has reported that part of an invention, 
 for which a patent is sought, is identical with part of an invention 
 which is the subject of an existing patent, a second patent will 
 not, except under special circumstances, be granted for that part, 
 although the validity of the first patent is disputed. (JD. B., 
 6 Ch. 272.) 
 
 (m) ^ajjarfe Scott AND Young. [1871] 
 
 o When a servant filed a provisional specification for an invention, 
 after which the master filed a provisional specification for a similar 
 invention, and subsequently filed a complete specification and 
 obtained letters patent:- — Held, that under the circumstances, 
 which threw the gravest suspicion on the bona fides of the master, 
 , the great seal might be affixed to the letters patent for the servant's 
 invention, and that the letters patent might bear the date of his 
 provisional specification, (i. B., 6 Ch. 274.) 
 
56 APPLICATION : 
 
 C«) iJn re Henry's Application foe Letters Patent:' iJe Farqu- 
 haeson's Application for Letters Patent. [1872] 
 
 Ail applicant for a patent does not, by lodging a complete 
 specification under tte 9th. section of the latent Law Amendment 
 Act of 1852, acquire the rights of a patentee so as, during the six 
 months' protection, to prevent any other person who has previously 
 obtained provisional protection for a similar invention from obtain- 
 ing a patent. (L. B., 8 Oh. 16T; 42 L. J., Gh. 363.; 
 
 (o) In re Harrison. [1874] 
 
 > Applications were made for two patents for inventions alleged 
 to be similar. The second applicant obtained a patent. . TTie first 
 applicant then presented a petition to have the great seal affixed 
 to letters patent for his invention, alleging that his delay had 
 been caused by the representations of the second applicant, and 
 also that the inventions were not similar. The Lord Chancellor 
 examined the provisional specification of the first applicant, and 
 the complete specification of the second applicant, and finding no 
 substantial similarity between the inventions, directed the letters 
 patent of the first applicant to be sealed. {L. iJ., 9 Ch. 631.) 
 
 (p) In re Bering's Patent. [1880] 
 
 Lord Cairns, L.C., refused to follow the decision in the case of 
 In re Bates and Bedgate's Patent (L. B., 4 Oh. 677), on the ground 
 that the legislature intended patentees to have the full term of 
 protection given by the provisional specification for perfecting 
 their inventions, and ordered the applicant's patent to be sealed, 
 although the sealing was opposed by an inventor who had at a 
 later date obtained provisional protection for the same invention, 
 and had already had the great seal affixed. (13 Oh. D. 393.) 
 
 (g) Hatfield's Patent. [1885] 
 
 The evidence being conflicting, the Comptroller-General not 
 being able to have the declarants cross-examined, sealed a patent. 
 On appeal, it was agreed between the parties that if the opponent, 
 ■who had also applied for a patent, withdrew his opposition, the 
 applicant would not oppose the opponent's application, and the law 
 officer, without actually sanctioning the terms, adjourned the case 
 'to enable them to be carried out. {Oriff. 288.) 
 
 Oosts. 
 
 (»•) Exjparte'^cix. [1812] 
 
 No costs will be given when the opposition is not unreasonable. 
 (1 V.&B.&l; 1 Wei. P. 0. 431.) 
 
 (s) Ex parte Henson, In re Alcock's Patent. [1 832] 
 
 Where a person has not opposed before the law oificer, and is 
 admitted to oppose the sealing under special circumstances, he will, 
 if unsuccessful, be ordered to pay the costs (1 Weh. P. 0. 432; 
 4 My. & 0. 511.) 
 
Costs. 57 
 
 (t) In re Cutler's Patent. [1839] ' ' 
 
 A party, wIlo had lodged an unsuccessful caveat against the 
 granting of a patent, ordered to pay to the patentee the taxed costs 
 occasioned by the caveat. Serrible, such costs will be taxed upon the 
 principle upon which costs in a cause are taxed as between party 
 and party. (See report in this case for the allowances made on 
 taxation.) (4 My. & Or. 510.) 
 
 (m) In re Nickel's Patent. [1841] 
 
 Petition to re-seal an altered patent, caveat entered, and re- 
 sealing refused. The Lord Chancellor ordered the petitioner to 
 pay the opponent's costs. (Cit. Hindmarch, 536 ; 1 PhiUipps, 36.) 
 
 (m1) In re Ashenhuest's Patent. [1853] 
 
 The sealing of the patent having been prevented by the filing 
 of objections, which were subsequently withdrawn, the objector 
 was ordered to pay costs. (2 W. B. 3-; 22 L. T. Bejp. 109.) 
 
 (») In re M'Kean's Patent. [1859] 
 
 Where a petition for sealing was answered for the first day of 
 Michaelmas term, and the respondent having only filed his affi- 
 davits on that day, was not allowed to read them, and the patent 
 was sealed, the Lord Chancellor refused to give costs against the 
 respondent. (1 De (?., F. & J. 2 ; 8 W. B.l; 1 L. T. Sep., 
 N. S. 19.) 
 
 (w) In re Copley's Patent. [1861] 
 
 Where notice of objections to the sealing a patent was fi.led and 
 afterwards withdrawn, the costs of the objections and of the 
 petition rendered necessary by them were ordered to be paid by 
 the objector. (31 L. J., Gh. 333 ; 8 Jur., N. S. 106 ; 5 L. T. Bep., 
 N. S. 387.) 
 
 {x} Ex parte Yates. [1869] 
 
 Where the sealing of a patent was objected to, on the ground 
 that the invention was a colourable imitation of one which was 
 the subject of an existing patent, a reference was made to the 
 law officer, whether, having regard to the prior patent, the seal 
 ought to be affixed to the patent as applied for. The law officer 
 having certified against the patent, the Court dismissed the petition 
 with costs, notwithstanding no opposition had been made to the 
 petitioner's application for a patent until he had applied to have it 
 sealed, and he had given all the requisite notices. (L. B., 5 Ch. 1.) 
 
 (y) Ex parte M-ATifCEAVX. [1870] 
 
 When the sealing of a patent is opposed on the ground that the 
 invention is similar to one which is the subject of an existing 
 patent, a reference will be made to the law officer whether, having 
 regard to the prior patent, the seal ought to be affixed to the patent 
 as applied for, the opponent paying the costs of the hearing, unless 
 
58 APPLICATION: 
 
 there has been fraud on the part of the applicant. (L. B., 5 Clu 
 518.) 
 
 (z) Stubbs' Patent. [1886] 
 
 The appeal to the law officer is a rehearing. If no fresh evi- 
 dence is adduced, and there are no special matters which ought to 
 influence the judgment of the law officer, costs will follow the 
 event. {Oriff. 298.) 
 
 (a) Ainswoeth's Patent. [1886] 
 
 The applicant, who had succeeded before the comptroller, failed 
 to appear on the day fixed for the appeal. Afterwards he explained, 
 and, on his paying the costs of the adjournment, a rehearing was 
 fixed. (Griff. 269.) 
 
 (&) Andeeton's Application. [1886] 
 
 It is of importance that before the Comptroller-General, who 
 cannot cross-examine, there should be the fullest good faith ; and 
 therefore, where the applicant's declaration did not give the whole 
 story, he was not allowed any costs, although successful. (2 Griff. 
 25.) 
 
 (c) Knight's Application. [1887] 
 
 The applicant having given notice of appeal, and then with- 
 drawn it, was ordered to pay costs. (2 Griff. 35.) 
 
 (d) "Woodhead's Application. , [1887] 
 
 When the opponents appealed on the ground that the alteration 
 made by the comptroller necessitated a further alteration, but had 
 not asked the applicants to agree to this alteration before appealing, 
 no costs were given. (2 Griff. 44.) 
 
 (e) Sielaff's Application. [1888] 
 
 Each party on an appeal to the law officer should hand in at the 
 official desk a statement of what fees have been paid before the law 
 officer. (5 0. B. 487.) 
 
 Delay. 
 
 (/) In re Beck's Patent. [1784] 
 
 Letters patent bore the date 12th August, but a caveat was not 
 discharged until the 27th, the patentee, thinking the letters patent 
 bore date the latter day, did not enrol his specification tUl the 
 18th December, when the four months had elapsed : — Seld, that 
 the date of the patent could not be altered. (1 Weh. P. C. 430.) 
 
 (g) Watson v. Peaks. N. P. [1809] 
 
 A patent, dated 10th May, contained a proviso that a specifica- 
 tion should be enrolled within one calendar month next and 
 immediately after the date thereof. The specification was en- 
 rolled on the 10th of June following : — Held, that the month did 
 
Belay. 59 
 
 not begin to run till the day after the date of the patent, and that 
 the specification was in time. (2 Camp. 294.) 
 
 Qi) In re Campbell's Patent. [1853] 
 
 The Court refused to extend the time for filing specifications, 
 &c., under the Patent Act, 1852, where there had been neglect or 
 default. (22 L. T. Bep. 93.) 
 
 (i) In re Simpson's and Isaacs' Patent. [1853] 
 
 A petition for a patent was lodged on the 2nd October, and 
 the warrant to seal the patent was issued on the 9th Pebruary- 
 following. By reason of objections having been filed to the 
 application, and to the warrant to seal, the patentees were unable 
 to file their specification within six months from the date of the 
 letters patent. Time extended, on petition, to seven months. 
 (21 L. T. Bep. 81.) 
 
 (j) In re Harris's Patent. [1855] 
 
 Leave was granted to file a specification after the time for 
 that purpose had expired, when the delay had arisen solely from 
 the non-delivery of the letter containing the proper instruction 
 for filing. (25 L. T. Bep. 90.) 
 
 (Je) In re Macintosh's Patent. [1856] 
 
 Petition that certain letters patent for materials to be used in 
 warfare might be sealed, notwithstanding the regular time for 
 that purpose had elapsed. On the 6th August, 1855, petition, 
 declaration, and provisional specification deposited. 18th De- 
 cember, warrant for sealing signed, and objections lodged on 
 behalf of the Ordnance. 6th May, 1856, objections withdrawn. 
 22nd November, petition for sealing ; order refused, on the ground 
 that no reason was stated why the application was not made on or 
 immediately after the 15th May. The present petition stated that 
 this delay was owing to the fact that during the period that 
 intervened between 5th May and 17th November, the petitioner 
 was directed by the Secretary of State for War to delay taking 
 the necessary steps for sealing the letters patent. 
 
 The Lord Chancellor thought that, under the circumstances, 
 the petitioner's case was made out, and ordered the letters patent 
 to be sealed. (2 Jur., N. S. 1242.) 
 
 (Z) Williams v. Nash. Ch. [1859] 
 
 The day of the date of the letters patent is excluded, and the 
 three years do not expire until twelve o'clock at night of the 
 anniversary of the day on which the letters patent are granted. 
 (5 Jur., N. S. 696 ; 28 L. J., Ch. 886 ; 28 Beav. 93.) 
 
 (m) In re Hersee and Smyth. [1866] 
 
 The time within which the application for the warrant and 
 for the letters patent ought to be made under the rules of the 
 
60 APPLICATION : 
 
 Patent Commissioners extended, where the delay was small and 
 accidental. (L. B., 1 Oh. 618 ; 14 L. T. Bep., N. S. 842.) 
 
 (n) Sequelin v. Terrell. N. P. [1867] ' 
 
 In an action for not completing a patent for the full term of 
 fourteen years : — Seld, that, as the effect of the statute 16 & 17' 
 Vict. c. 5, was to give a patent by instalments of three, four, and' 
 seven years, a defendant would not be liable to pay the different 
 sums of money required by the Act till the expiration of these 
 different periods. (16 L. T. Bep., N. S. 539.) 
 
 (o) Bx parte BiJiSEn. [1872] 
 
 B. obtained provisional protection on the 30th of March, gave 
 notice to proceed on the 23rd of April, and on the 21st applied for 
 the great seal to be afExed to letters patent for his invention. On 
 the 29th of May a caveat was entered against the sealing, and B. 
 petitioned the Lord Chancellor to affix the seal on the 27th of 
 September : — Meld, that B.'s delay was not an objection to sealing' 
 his patent, and that he was not put in a worse position because 
 he had given notice to seal his patent some months before he was 
 obliged to do so. (i. B., 8 Gh. 60.) 
 
 Procedure. 
 
 (jp) Ex parte 'S.oovs. [1802] 
 
 Enrolment of a patent could not be dispensed with for the 
 purpose of preventing the specification being made pubHo. 
 (6 Yes. 598.) 
 
 Ql) In re Brough. [1844] 
 
 The clerk at the enrolment office cannot receive an enrolment 
 conditionally, and the Master of the Eolls refused to cancel or 
 vacate an enrolment of a specification which had been left at the 
 office, and had been enrolled, notwithstanding directions not to 
 enrol it until further order. (7 Beav. 104.) 
 
 (r) In re Schlumberger's Patent. [1853] 
 
 The Crown could at any time before affixing the great seal, 
 under proper circumstances, countermand the warrant. (9 Moo. 
 
 P. a a 1.) 
 
 (s) In re Tolson's Patent. [1866] 
 
 An application under the 2nd section of the 16 & 17 Vict. c. 115, 
 by a person opposing the grant of letters patent, for the inspection 
 of the provisional specification of certain letters patent, on the 
 ground that the subject-matter was the same as that for which 
 the applicant had obtained a patent, refused. (6 D., M. & G. 422.) 
 
 (i) Warman's Application. [1886] 
 
 Notice of hearing had been sent to the opponent by post, but 
 had not been delivered, and the opponent was not at the hearing. 
 
International and Colonial Arrangements. 61 
 
 The Comptroller-General having declined to rehear unless 
 directed by the law officer, the opponent filed a notice of appeal, 
 and the law officer directed a rehearing. (2 Griff. 43.) 
 
 (m) Lake's Application. [1887] 
 
 Wrigley, as agent for the opponent, gave notice of opposition, 
 but died before the hearing : — Held, that the opponent's own 
 name might be substituted in the notice. (2 Oriff. 35.) 
 
 («) Hill's Application. [1888] 
 
 The appellant need not give notice to the respondent on 
 appeal to the la^ ofl&cer if the respondent was the applicant before 
 the comptroller; but notice was in future to be given by the 
 Patent Office or the official clerk. (5 0. B. 699.) 
 
 International and Golonial Arrangements. 
 
 Patents Act, 1883, sect. 103. (1.) (Amended by 48 & 49 Vict. c. 63, 
 sect. 6.) If Her Majesty is pleased to malje any arrangement with the 
 government or governments of any foreign state or states for mutual protection 
 of inventions, then any person who has applied for protection for any inven- 
 tion, in any such state, shall be entitled to a patent for his invention under 
 this Act, in priority to other applicants ; and such patent shall have the same 
 date as the date of the application in such foreign state. 
 
 Provided that his application is made, in the case of a patent, within seven 
 months from his applying for protection in the foreign state with which the 
 arrangement is in force. 
 
 Provided that nothing in this section contained shall entitle the patentee to 
 recover damages for infringements happening prior to the date of the actual 
 acceptance of his complete specification. 
 
 (2.) The publication in the United Kingdom, or the Isle of Man, during 
 the period aforesaid of any description of the invention, or the use therein 
 during such period of the invention, shall not invalidate the patent which 
 may be granted for the invention. 
 
 (3.) The application for the grant of a patent, under this section, must be 
 made in the same manner as an ordinary appUcation under this Act. 
 
 (4.) The provisions of this section shall apply only in the case of those 
 foreign states with respect to which Her Majesty shall from time to time by 
 Order in Council declare them to be applicable, and so long only in the case 
 of each state as the Order in Council shall continue in force with respect to 
 that state. 
 
 Patents Act, 1885, sect. 6. In subsection one of section one hundred and 
 three of the principal Act, the words " date of the application " shall be sub- 
 stituted for the words " date of the protection obtained." 
 
 > Patents Act, 1883, sect. 104. (1.) Where it is made to appear to Her 
 Majesty that the legislature of any British possession has made satisfactory 
 provision for the protection of inventions, patented in this country, it shall 
 be lawful for Her Majesty from time to time, by Order in Council, to^ apply 
 the provisions of the preceding section with such variations or additions, if 
 any, as to Her Majesty in Council may seem fit, to such British possession. 
 
 (2.) An Order in Council under this Act shall, from a date to be men- 
 tioned for the purpose in the Order, take effect as if its provisions had been 
 contained in, this Act ; but it shall be lawful for Her Majesty in Council to 
 revoke any Order in Council made under this Act, 
 
62 APPLICATION : 
 
 By Order in Council made the 26th of June, 1884, reciting the ahove pro- 
 vision and reciting that a declaration had been signed at Paris on March 17th, 
 1884, duly conveying the accession of Great Britain to the International 
 Convention for the protection of industrial property, and reserving power to 
 thereafter accede to the convention on behalf of the Isle of Man, the Channel 
 Islands, and any of Her Majesty's possessions, it was declared that the above 
 provision of the Act should, from the 7th July, 1884, apply to the following 
 countries, viz. : — 
 
 Belgium. ' Salvador. 
 
 Brazil. Servia. 
 
 France. Spain. 
 
 Guatemala. Switzerland. 
 
 Italy. Ecuador, and 
 
 Netherlands. Tunis. 
 Portugal. 
 
 London Gazette, July 1, 1884. 
 
 By an Order dated 27th January, 1885, the above was extended to San 
 Domingo. 
 
 By an Order dated 9th July, 1885, the above was extended to Sweden and 
 Norway. 
 
 By an Order dated 17th September, 1885, the above provisions are to apply 
 to Queensland. 
 
 By an Order dated 16th April, 1886, the above provisions are to cease to 
 apply to Ecuador. 
 
 By Orders dated 24th September, 1886, the above are to apply to Paraguay 
 and Uruguay, and to cease to apply to Salvador. 
 
 By an Order dated 12th July, 1887, the above was extended to the United 
 States of America. 
 
 ' By an Order dated 17th November, 1888, the above was extended to the 
 East Indian Colonies of the Netherlands. 
 
 By Orders dated 28th May, 1889, the above was extended to Mexico, and 
 was to cease to apply to San Domingo. 
 
 By an Order dated 8th February, 1890, the above was extended to New 
 Zealand. 
 
 Patents Eulbs, 1890 (International and Colonial Arrangements). — 
 
 24. The term " foreign application " shall mean an application by any person 
 for protection of his invention in a foreign state or British possession to 
 which by any Order of Her Majesty in Council for the time being in force the 
 ]irovisions of section 103 of the Patents, Designs, and Trade Marks Act, 1883, 
 have been declared applicable. 
 
 25. An appUcation in the United Kingdom for a patent for any invention in 
 respect of which a foreign application has been made shall contain a declara- 
 tion that such foreign application has been made, and shall specify all the 
 foreign states or British possessions in which foreign applications have been 
 made and the official date or dates thereof respectively. The application must 
 be made within seven months from the date of the first foreign application, 
 and must be signed by the person or persons by whom such first foreign 
 application was made. If such person, or any of such persons, be dead, the 
 ajpplioation must be t^igned by the legal personal representative of such dead 
 person, as well as by the other applicants, if any. 
 
 26. The application in the United Kingdom shall be made in the Form A^ 
 in the Second Schedule to these Rules and in addition to the specification, 
 provisional or complete, left with such application must be accompanied by 
 
 (1.) A copy or copies of the specification and drawings or documents 
 coriesponding thereto, filed or deposited by the applicant in the 
 
International and Colonial Arrangements. 63 
 
 Patent Office of the foreign state or British possession in respect 
 of the first foreign application duly certified by the official chief 
 or head of the Patent Office of such foreign state or British pos- 
 sessions as aforesaid, or otherwise verified to the satisfaction of the 
 Comptroller: 
 (2.) A statutory declaration as to the identity of the invention in respect 
 of which the application is made with the invention in respect of 
 which the said first foreign application was made, and if the 
 specification or document corresponding thereto be in a foreign 
 language, a translation thereof shall be annexed to and verified 
 by such statutory declaration. ' 
 
 27. On receipt of such application, together with the prescribed specification 
 and the other document or documents accompanying the same, required by 
 the last preceding rule, and with such other proof (if any) as the Comptroller 
 may require of or relating to such foreign application or of the official date 
 thereof, the Comptroller shall make an entry of the applications in both 
 countries and of the official dates of such applications respectively. 
 
 28. All further proceedings in connection with such application shall be 
 taken within the times and in the manner prescribed by the Acts or Rules 
 for ordinary applications. 
 
 29. The patent shall be entered in the Eegister of'Patents as dated of the 
 date on which the first foreign application was made, and the payment of 
 renewal fees, and the expiration of the patent, shall be reckoned as from the 
 date of the first foreign application. 
 
 {w) In re Wirth's Patent. L. C. [1879] 
 
 Upon the hearing of a petition that the great seST might be 
 affixed to letters patent, the Lord Chancellor did not give effect to 
 an objection going to a matter of form, such as an objection to the 
 jurat of a declaration, which is a matter for the Patent Office 
 solely, as a matter of procedure. 
 
 W. was an alien resident abroad. He acted as the agent of 
 M. & Co., and applied for letters patent in England for an invention 
 of the latter. He made the usual statutory declaration, which 
 was filed with his petition. In it W. was described as an alien 
 resident abroad, and it was declared before H. B. M. Consul at 
 Frankfort. Objection founded on these facts overruled. (L. B., 
 12 Gh. D. 303.) 
 
 (x) L'OlSEAU AKD PiEREAEd's APPLICATION. [1887] 
 
 The applicants had obtained a patent in France, on the 18th 
 August, 1886, and applied on the 8th October, 1886, without 
 mentioning the French patent in the common form for a patent 
 for "automatic apparatus for subjecting , the person to the action 
 of electric currents." Meantime, on the 20th August, 1886, the 
 opponent Everitt had applied for a patent for a similar invention, 
 and had lodged a complete specification, which was accepted. The 
 applicant's English specification contained claims of inventions 
 not described in the French specification, but the applicants were 
 allowed to amend by striking out these additional claims. The 
 law officer considered that there had been no positive misrepre- 
 sentation; and that that being so he had no power either to post- 
 date the patent or to impose terms. On an application under 
 
64 AET. 
 
 sect. 103, the law oificer will not insist that the words of the 
 complete specification should be in terms in the form of the 
 foreign specification, but any deviation is inserted at the risk of 
 the applicant, because the only privilege given is that of date, and 
 that privilege is confined to the invention protected in the foreign 
 country. (2 Griff. 36.) 
 
 (j/) Shallenbergee's Application. [1889] 
 
 Shallenberger had taken out a patent in America, and Thompson, 
 as agent of his assignee, now applied for a patent here : — Seld, 
 that if Thompson wanted the patent dated back it must be a 
 patent in the name of Shallenberger, and not in the name of 
 Thompson, and that the application must be amended accordingly. 
 (6 L. B. 550.) 
 
 (z) Caeez's Application. [1889] 
 
 A patent taken out in the name of a foreigner is valid, and 
 when it is desired to take advantage of the International Conven- 
 tion and sect 103, the application must be made in the name of 
 the original foreign patentee. (6 0. B. 652.) Semble : — Foreign 
 Corporations can apply under sect. 103. 
 
 (a) Main's Application. [1889] 
 
 Main, who was an American, applied for a United States patent 
 on the 18th April, 1887, and on the 18th November applied for a 
 grant of an English patent to be dated the 18th April. The 
 opponent had filed his application for a patent for a similar 
 invention on the 8th June, 1887, and the United States did not 
 come within sect. 103 until July 12th, 1887 : — Held, by the 
 Comptroller and Law OfScer, (1) that " within seven months from 
 his applying," means within seven months from the date of 
 applying, and that therefore the application was in time, and 
 (2) that although the opponent's application preceded the Order in 
 Council, yet that he was not a third party whose rights were 
 preserved under Article IV. of the Convention, and that therefore 
 the opposition failed. C7 0. B. 13.) 
 
 (6) Van de Poele's Application. [1889] 
 
 The date of application in America appeared as the date of 
 a " renewed " application. Held, that as the former application 
 had proved abortive, the applicant was entitled to a patent as of 
 the later date. (7 0. B. 69.) 
 
 Art lost and rediscovered. 
 
 (c) Househill Company v. Nielsen. [1843] 
 
 An invention which formerly existed, but has been entirely 
 lost sight of and unknown to the public becomes like a new 
 discovery (per Lord Brougham, in the House of Lords). (1 Webst. 
 
 P. a 717.) 
 
ASSIGNMENT. 65 
 
 Art as the subject-matter of a patent. See Subject-Matter, 492 (6). 
 Art, explanation of terms of. See Hills v. Evans, p. 470 (p). 
 
 Assessors. 
 
 Patents Act, 1883, sect. 28. (1.) In an action or proceeding for infringe- 
 ment or revocation of a patent, tlie Court may, if it thinks fit, and shall, on 
 the request of either of the parties to the proceedinor, call in the aid of an 
 assessor specially qualified, and try and hear the case wholly or partially with 
 Lis assistance ; the action shall he tried without a jury unless the Court shall 
 otherwise direct. 
 
 (2.) The Court of Appeal or the Judicial Committee of the Privy Council 
 may, if they see fit, in any proceeding before them respectively, call in the aid 
 of an assessor as aforesaid. 
 
 (3.) The remuneration, if any, to be paid to an assessor under this section 
 shall be determined by the Court or the Court of Appeal or Judicial Committee, 
 as the case may be, and be paid iu the same manner as the other expenses of 
 the execution of this Act. 
 
 (c) Plating Company v. Paequhaeson. [1879-1883] 
 
 When the defendants objected to their secret process being 
 inspected, the Court appointed an analyst to inspect and report, 
 {Griff. 187.) 
 
 Assignment of Patent, 
 
 notification of, to be registered. Patents Act, 1883, sect. 23, p. 397 
 
 for part of kingdom. Patents Act, 1883, sect. 36, p. 65 
 
 person entitled by, to be entered on register. Patents Act, 1883, 
 
 sect. 87, amended by 51 & 52 Vict., ch 50, sect. 21, p. 65 
 to take effect on termination of suit, p. 66 (d) 
 by bankruptcy of patentee, pp. 66 (e), 67 (g) (/) 
 by bankrupt, after mortgaging his right under, p. 66 (/) 
 before registration of probate, p. 69 (s) 
 of part of, pp. 69 (9), 287 (r!) 
 
 Assignee may sue for infringement, pp. 287 (0) (p), 288 (u) 
 though only assignee of part, p. 287 (t) 
 and may petition for extension, pp. 100 (g), 101 («) (/), 102 (p), 
 
 103 («) (v) (w) 
 Assignment of all future acquired patent right is not against public 
 
 policy, p. 70 (a;) 
 Assignee of shares of profits is entitled to an account from licensee, 
 
 p. 71 (x) 
 assignee not bound to keep the patent on foot, p. 72 ((Q 
 assignor does not warrant validity of patent, pp. 68 (n), 71 (2) 
 communication of improvements by as-signorto third parties not restrained 
 
 by interim injunction, p. 71 {a). 
 
 Patents Act, 1883, sect. 36. A patentee may assign his patent for any 
 place in or part of the United Kingdom, or Isle of Man, as effectually as if the 
 patent were originally granted to extend to that place or part only. 
 
 Sect. 87, amended by 51 & 52 Vict., ch. 50, sect. 21. Where a person 
 becomes entitled by assignment, transmission, or other operation of law to 3. 
 patent, the Comptroller shall on request, and on proof of title to his satisfaction, 
 cause the name of such person to be entered as proprietor of the patent in the 
 register of patents. The person for the time being entered in the register of 
 patents, as proprietor of a patent, shall, subject to the provisions of this Act 
 and to any rights appearing from such register to be vested in any other 
 
 F 
 
66 ASSIGNMENT. 
 
 person, have power absolutely to assign, grant licenses as to, or otherwise deal 
 with the same, and to give effectual receipts for any consideration for such 
 assignment, license, or dealing. Provided that any equities in respect of sucli 
 patent may be enforced in like manner as in respect of any other personal 
 property. 
 
 (d) Caetweight v. Amatt. [1799] 
 
 A. by indenture (reciting that a suit was depending between 
 him and B. respecting certain patents, and that the same could 
 not be assigned without hazard of defeating the suit) granted 
 absolutely the said patents, together with some others, to C, 
 excepting, however, until the determination of the above-mentioned 
 suit such patents as should be necessary to support A.'s legal title. 
 Then followed a covenant that A., upon the determination of the 
 suit, should assign the excepted patents to C, and that until such 
 assignment A. should stand legally possessed of the same : — Held, 
 that the legal interest in the excepted patents vested in 0. upon 
 the determination of the suit, without assignment. (2 B. <fc P. 43 ; 
 Dav. P. G. 240.) 
 
 (e) Hesse v. Stevenson. [1803] 
 
 An Act of Parliament empowering a bankrupt patentee, his 
 executors, administrators and assigns, to assign the right under 
 letters patent to a greater number of persons than allowed by the 
 letters patent, and declared to be a public Act, does not enable 
 either the bankrupt or his assigns to make a better title than they 
 could before the Act. 
 
 When a patentee becomes bankrupt, his patent right vests in 
 the assignees. (3 S. & P. 565 ; Dav. P. C. 244.) 
 
 Lord Alvanley, 0. J., in delivering judgment, said : " Next it is 
 contended, that the nature of the property in this patent was 
 such that it did not pass under the assignment ; and several cases 
 were cited in support of this proposition. It is said, that although 
 by the assignment every right and interest, and every right of 
 action, as well as right of possession and possibility of interest, is 
 taken out of the bankrupt and vested in the assignees, yet that 
 the fruits of a man's own invention do not pass. It is true that 
 the schemes which a man may have in his own head before he 
 obtains his certificate, or the fruits which he may make of such 
 schemes, do not pass, nor could the assignees require him to assign 
 them over, provided he does not cany his schemes into effect until 
 after he has obtained his certificate. But if he avail himself of 
 his knowledge and skill, and thereby acquire a beneficial interest, 
 which may be the subject of assignment, I cannot frame to myself 
 an argument why that interest should not pass in the same manner 
 as any other property acquired by his personal industry." (3 B. & P. 
 677.) 
 
 (/) Ex parte Granger. [1812] 
 
 A patentee, having mortgaged his right under his patent, con- 
 tinued in the notorious use of the invention until his bankruptcy. 
 
ASSIGNMENT. 67 
 
 TEe Lord Chancellor was inclined to think the right passed to the 
 assignees under the statute, but directed a case for the Court of 
 King's Bench, which was never argued. (Oodson on Patents, 
 2nd ed. p. 225.) 
 
 (g-) Bloxam v. Elsee. [1827] 
 
 Where an Act of Parliament secured to certain persons, for a 
 further term, the benefit arising from a patent for making a 
 machine, -with a proviso that it should become void if they should 
 transfer or assign their interest therein to any persons exceeding 
 the number of five ; and two of the patentees became bankrupt : — 
 Held, that the assignment of their interests to their assignees for 
 the benefit of creditors, though the number exceeded twenty, was 
 not within the proviso. (9 D. & B. 215 ; 6 B.dG. 169 ; see 15 c& 16 
 Vict. c. 83, s. 36.) 
 
 (h) DuvEBGiEE V. Fellows. H. L. [1830] 
 
 Where a bond was given for payment of £10,000, with a con- 
 dition that the money should be paid on the obligee's procuring 
 subscriptions for 9000 shares in a company to be formed of many 
 persons, for the purpose of becoming assignees of a patent, and 
 carrying on the patent process ; and the patent contained a pro- 
 viso, that it should be void if assigned to more than five persons : 
 — Seld, that the obligee must be presumed to know of that proviso, 
 and that as the bond was subject to a condition for the performance 
 of an illegal act, it was void. (10 G. B. 826 ; affirmed in H. L., 
 IG.&F. 39.) 
 
 It was also held in the House of Lords that the plaintiff was 
 equally incapable of recovering on the bond, whether he knew or 
 did not know the terms of the letters patent. (1 G. & F. 39.) 
 
 (i) Lovell v. Hicks. [1836] 
 
 Agreement for the purchase of part of the profits of a patent, 
 which turned out to be a mere bubble, set aside as having been 
 obtained by fraud and misrepresentation, and so much of the 
 purchase-money as had been paid under the agreement ordered to 
 be repaid. (2 t. & G. 46.) 
 
 (J) M' Alpine v. Mangnall. Ex. Ch. [1846] 
 
 A voluntary assignment by a patentee of letters patent, to trus- 
 tees for the benefit of creditors, more than twelve in number, is 
 not such an assignment as will avoid the patent. (3 G. B. 496 ; 
 15 L. J., G. P. 298.) 
 
 (h) Payne v. Banner. Ch. [1846] 
 
 A patentee agreed to give one-fourth share of a patent to B„ 
 in consideration of £50 then paid, and of £150 to be paid in 
 several sums at various times ; and of a sum of £300 to be paid 
 by a particular day, to be applied in taking out foreign patents. 
 The £300 was not paid, and the foreign patents were, conse- 
 quently, not obtained : — Held, that time was the essence of the 
 
 F 2 
 
68 ASSIGNMENT. 
 
 contract, and that tlie patentee was entitled to rescind it, notwith- 
 standing he had accepted payment of the other sums at other 
 times than those which were fixed by the agreement. (15 L. J., 
 Ch. 227.) 
 
 (Z) Electeic Telegraph Company v. Brett. [1851] 
 
 The assignee of a patent may maintain an action for infringe- 
 ment. (10 C. B: 838.) 
 
 (m) Hill v. Modnt. [1856] 
 
 By an agreement between A. and B., it was agreed that A. 
 should do all acts necessary, except the advance of money, for the 
 purpose of procuring and perfecting certain letters patent, and 
 should immediately after the same were procured execute an assign- 
 ment of one-third share therein to B. ; and B. agreed to pay 
 all fees and disbursements that might be necessary for procuring 
 the letters patent, enrolling the specification, and otherwise 
 perfecting the same : — Held, that the execution of an assignment 
 by A. was the whole consideration for the undertaking of B. 
 to pay the sums mentioned in' sect. 2 of 16 & 17 Vict. c. 5; 
 and, • consequently, a condition precedent to his right to sue 
 B. for the non-payment thereof. (18 C. B. 72; 25 L. J., C. P. 
 190.) 
 
 (») Hall v. Conder. [1857] 
 
 • In an agreement between plaintiff and defendant, it was recited 
 that the plaintilf had invented and obtained a patent -for a method 
 of preventing boiler explosions and desired to dispose of half such 
 patent, to which he declared he had full right and title, and that 
 he had applied to the defendaiut to purchase such half, and plaintiif 
 agreed to make over, and did accordingly make over, to the 
 defendant the above-mentioned half of the said patent : — Held, 
 that by this agreement the plaintiff did not profess to sell, nor did 
 the defendant profess to , buy, a good and indefeasible patent 
 right, 'but only the moiety of the patent, such as it was; and that, 
 as there was no express or implied warranty of title or quality, it 
 was no answer to an action for the price^of the said moiety of the 
 patent, to plead that the invention was wholly worthless, and of no 
 public utility, and not new, and that the plaintiff was not the first 
 and true inventor. (2 G. B., N. S.22; 3 Jur., N. S. 366 ; 26 L. J., 
 a p. 138 ; affirmed on appeal, 2 0. B., N. S.53;3 Jur., N. 8. 
 963 ; . 26.i. /., G. P. 288.) 
 
 (o) Smith v. Neale. [1857] 
 
 The defendant made the following written proposal to the 
 plaintiff, who accepted it verbally : — " First, that the patent 
 should be conveyed to myself and any friend of yours, in trust for 
 ' The Ladies' Guild,' subject to the following conditions." 
 
 The conditions related to the remuneration of the plaintiff,' and 
 the payment of the stamp duty on the patent. 
 
 Willes, J., in delivering judgment, said: "Such a cimtract 
 
ASSIGNMENT, 69' 
 
 involves' no warttaty tfeat the aiiventidn Was new,- or was a, 
 manufacture' \frithiffi tlie statute of - JameS, but merely that Her 
 Majesty had granted to the plaintiff the letters patent which 
 she proposed to assign. In short, the defendant in this case, as 
 in Hall v. Conder, contracted for the use of the plaintiff's right 
 such as it was, without regard to whether it could be sustained 
 upon litigation or not; and there is nothing unreasonable or 
 uncommon in such a bargain." (2 0. B., N. S. &%; Z Jur., N. S. 
 616.; 2QL.J., C P. 143.) 
 
 (p) D0NNICLIFF V. Mallett. [1869] 
 
 It is competent for the assignee of a separate and distinct portion, 
 of a patent to sue for an infringement of that part without joining 
 one who has an interest in another part. (7 G. B., N. S. 209.) 
 
 (q) Walton v. Lavatee. [1860] 
 
 The sale of a moiety of a patent right conveys an interest pro 
 tanto in the patent. (8 G. B., N. S. 162 ; 6 Jur., N. S. 1261 ; 29 
 L. J., G. P. 275 ; 3 L. T. Sep., N. S. 272.) 
 
 (r) Kernot ». Potter. Ch. [1861] 
 
 P. agreed to purchase from K. a patent for purifying paraffine, 
 and to work it during fourteen years, " in case it could be so 
 long worked at a profit," and to pay a royalty of one-third of 
 the difference between the market price of crude paraffine and 
 the price it sold at. It turned out, that although it could be 
 worked at a profit, yet deducting the royalty reserved there 
 would be a loss : — Held, that the agreement was at an end. (30 
 Beav. 343.) 
 
 (s) Ellwood v. Christy. [1864] 
 
 The executors of a patentee having obtained probate of their 
 testator's will, assigned his patent to another person, but the 
 probate was not registered till after the assignment : — JSeld, that 
 the assignment was valid. (10 Jur., N. S. 1079; 13 W. E. -54; 
 11 L. T. Bep., N. S. 342 ; 17 G. B., N. S. 764 ; 34 L. J, G. P. 130.) 
 
 (t) Lewin v. Brown. [1866] 
 
 The declaration stated that a petition had been presented by the 
 plaintiffs, at the request of the defendant, for the granting to the 
 defendant of a patent, that the plaintiffs had filed a provisional 
 specification at their own expense, upon condition that the 
 defendant should complete the specification within six months, 
 and that afterwards it was agreed that the defendant should 
 sell to the plaintiffs his rights in respect of the said patent for 
 the sum of £6, to be paid by the plaintiffs to the defendant on 
 their having completed, at their own expense, the said patent; 
 that it thereupon became necessary, in order to enable the 
 plaintiffs to complete the said patent in pursuance of the said 
 agreement, that the defendant should sign and seal a complete 
 specification ; that the plaintiffs tendered to the defendant a 
 
70 ASSIGNMENT. 
 
 complete specification for his signature. Breach, that the 
 
 defendant would not sign it : — SeM, that the defendant was 
 
 bound, under this agreement, to sign the specification. (14 
 W. B. 640.) 
 
 (m) Daw v. Eley. Ch. [1867] 
 
 A patent was taken out in France, in 1858, by A., who, in 1861, 
 obtained letters patent for his invention in England. The English 
 patent was assigned by A. to B. In 1866 the French patent was 
 declared void, on the ground of the non-payment by A. of the 
 fees imposed upon patentees by the French law -.—Held, that B., 
 as assignee of the English patent, was bound by the decision 
 respecting the French patent ; for, " it was the business of every 
 one 1vho took an assignment of a foreign patent — having sect. 25 
 before him — to see that the foreign patent was kept up in its full 
 validity." (L. B. 3 Eq. 496 ; 36 L. J., Ch. 482.) 
 
 (») Smith v. Buckinham. [1870] 
 
 By an agreement between the plaintiff and defendant, after 
 reciting that the plaintiff had lately invented an improved 
 composition or material to be employed in waterproofing or 
 tendering woven fabrics impervious to moisture, for which he 
 had duly obtained provisional protection, and had obtained a 
 certificate of protection; it was agreed between them for the 
 considerations therein mentioned, and in consideration of a 
 further sum of £350, to be paid on the completion of the neces- 
 sary specification and grant of the letters patent, to transfer 
 and make over to the defendant all his interest in the invention 
 or improvement thereof, and all benefit to be derived from the 
 provisional protection, or from any letters patent to be thereafter 
 granted for the invention. In an action on this agreement to 
 recover the £350, the defendant pleaded that the plaintiff had 
 not invented an improved composition or material to be employed 
 in waterproofing , or rendering woven fabrics impervious to 
 moisture ■.—Held, the plea was bad. (18 W. B., 314 ; 21 L. T. 
 Sep., N. S. 819.) 
 
 (w) Chevasse v. Stevens. [1874] 
 
 Bill to set aside an assignment of a patent on the ground of 
 misrepresentation by the patentee, dismissed on the ground, inter 
 alia, that the representations were made bond fide. ( W. N. 1874, 
 p. 193.) 
 
 (jc) Printing and Numerical Eegistering Company v. Sampson. 
 M. E. [1875] 
 
 It is not against public policy for the vendor of a patent to 
 agree to assign to the purchaser all future patent rights which 
 he might afterwards acquire with respect to the inventions sold, 
 or any of a like nature. Specific performance of an agreement to 
 that effect decreed. (44 L. J., Eq. 705.) 
 
ASSIGNMENT. 71 
 
 (a;) Bergmann v. MacMillan. [1881] 
 
 W]ie.n an assignment is made of a share of profits arising from 
 the working of a patent hy licensees, the assignee is entitled to an 
 account from the licensee, but the account must be taken once for 
 all in the presence of all the parties interested. The licensee is not 
 bound to account to each assignee separately. The assignee who 
 asks for an account must place himself in the position of the 
 assignor by offering to pay to the accounting party anything 
 which may be due to them by the assignor. (17 Ch. D. 423.) 
 
 (2/) EUSTON V. TOBIN. [1881] 
 
 Action to set aside an agreement for purchase of defendant's 
 patent on grounds of misrepresentation and concealment, and 
 counterclaim for specific performance. Plaintifi''s action was dis- 
 missed with costs, and the defendant had a decree for specific 
 performance, with a reference to ascertain the deductions which 
 ought to be allowed in respect of the French patent, which was 
 invalid, and the Belgian patent, which had lapsed. (W. N. 
 1881, 6.) 
 
 (z) LiAEDET V. Hammond Electkic Light Company. [1883] 
 
 In an action for specific performance of an agreement for pur- 
 chase by defendants from the plaintiffs of certain patents, the 
 defendants pleaded that it was an implied term of the contract 
 that the patents were good and valid patents, and that in fact the 
 patents were not good and valid : — Held, on the construction of 
 the agreement, that there was no reasonable ground to contend 
 that the case was taken out of the ordinary rule that the vendor 
 of a patent does not warrant its validity, and that therefore the 
 plea ought to be struck out, since otherwise the plaintiff could not 
 safely abstain from producing evidence as to validity. (W. N. 
 1883, 96; 31 W. B. 710.) 
 
 (a) London and Leicester Hosiery Company v. Geiswold. [1886] 
 
 The plaintiffs were assignees of a patent ; the defendant, the 
 inventor, had therein covenanted to communicate any improve- 
 ments to the plaintiffs. The plaintiffs moved for an interim in- 
 junction to restrain the defendant (1) from infringing, (2) from 
 disclosing his improvements to other persons, (3) from assisting 
 defendants in actions brought by the plaintiffs for infringements. 
 The Court held (1) that there was no infringement ; that to grant 
 (2) would be compelling specific performance of the covenant on 
 an interlocutory application ; and that as regards (3) the Court 
 could not on an interlocutory motion go so far as to restrain the 
 defendant from communicating to other persons material informa- 
 tion within his own knowledge relating to specifications or other 
 matters antecedent to the granting of the patents in question. 
 (Griff. 154; 3 0. B. 251 ; 2 T. L. B. 676.) 
 
72 ASSISTANCE. 
 
 (6) Anderson v. Patent Oxonite Company, Punshon and Vizer. 
 [1886] 
 
 The plaintiff asked for an interim injunction to restrain the 
 •defendant company from infringing a patent for an improved 
 method of blasting granted in 1883 to Punshon and Vizer, In 
 1884 the plaintiffs and Punshon had left a provisional specification 
 for improvements on the said patent, and in 1885 Punshon had 
 -signed a document making over to the plaintiff Anderson all his 
 share in the said patent. The name of Anderson was afterwards 
 entered on the register as assignee of a half-share of the patent. 
 The defendant company and Punshon set up a defence that the 
 assignment to Anderson was obtained by fraud, and moved to 
 expunge the name of Anderson from the register. Chitty, J., 
 found that the defence was not proved, and granted an interim 
 injunction, and dismissed the cross motion with costs. (3 0. B. 
 279.) 
 
 (c) In re Parnell's Patent. Colonel Halkett's Application. 
 [1888] 
 
 An agreement which began " It is proposed to form a syndicate 
 to take up patents for an increased number of countries " — say inter 
 alia Great Britain — in re Mrs. Parnell's patent process, Mrs. Pamell 
 and Colonel Halkett to share equally, "the terms on which the 
 rights are to be transferred to such syndicate to be agreed upon 
 collectively by both the above persons " : — Eeld, not to give 
 Colonel Halkett any right of equity to a half-share in a patent for 
 Great Britain which was taken out subsequently. (T. L. Bep. 
 ir., 197 ; 5 O.B. 126.) 
 
 (d) In re Eailwat and Electrical Appliances Company. [1888] 
 
 Patentees by deed assigned their patent, with covenants for title 
 and quiet enjoyment, to a company for £250, " and for the other 
 considerations therein appearing." The company covenanted to 
 pay to the patentees a royalty for every article manufactured or 
 sold by the company under the patent " while subsisting," and also 
 a proportion of the profits ; but did not expressly covenant either 
 to keep the patent on foot, or to manufacture or sell articles 
 under the patent. Through inadvertence the company omitted to 
 pay the second renewal fee, and the patent lapsed : — Held, that no 
 covenant to keep the patent on foot could be implied ; and that 
 even if it could, the patentees could not obtain more than nominal 
 damages against the company, as there was no obligation express 
 or implied, to manufacture the patented articles. (39 Gh. D. 597.) 
 
 Assistance in carrying out invention. 
 
 (e) Bloxam v. Elsee. [1825] 
 
 Where a patentee has employed a professional engineer to assist 
 in carrying an invention into effect, it is no objection to the patent 
 that the assistant has suggested several parts of the patented 
 machinery. (1 G. & P. 567.) 
 
BANKEUPT. 73 
 
 (/) MiNTEE V. Wells. [1834] 
 
 If the patentee suggested the principle to another, and the other 
 was assisting him, then the patentee is the true and first inventor, 
 and the assistant is a machine, so to speak, used for the purpose 
 of carrying the conception into effect. (1 Web. P. G. 127.) 
 
 Assizes. See under Practice Venue, p. 353. 
 
 Attachment. See Practice Injunction, p. 333 (y) (z). 
 
 Attorney-General. On petition for extension. See under Extension, 
 pp. 99, 111 (m), 113 (w), 118 (q), 122 (m), 139 (i) (/fc). 
 
 Bankrupt, 
 
 patent vests in assignees of, p. 73 (g) 
 
 quaere, after mortgage, p. 73 (A) 
 assignee of, may sue for infringement, p. 286 (k) 
 action for infringement against, continued against trustee, p. 73 (Ic). 
 
 (g) Hesse v. Stevenson. [1803] 
 
 When a patentee becomes bankrupt, his patent rights vested in 
 the assignees. (8 B. & P. 565 ; JOav. P. C. 244.) 
 
 (h) Ex parte Q-RXsa^B,. [1812] 
 
 A patentee having mortgaged his right under his patent con- 
 tinued in the notorious use of the invention until his bankruptcy. 
 The Lord Chancellor was inclined to think that the right passed 
 to the assignees under the statute, but directed a case for the 
 Court of King's Bench, which was never argued. (Godson on 
 Patents, 2nd ed., p. 225.) 
 
 (j) Bloxam v. Elsee. [1827] 
 
 Term of patent extended by Act of Parliament provided that 
 the patentees should not transfer or assign to any persons exceeding 
 the number of five : two of the patentees became bankrupt : — Held, 
 that the assignment to their assignees for the benefit of creditors, 
 though the number exceeded twenty, was not within the proviso, 
 and that the assignees might maintain an action for infringement. 
 (9 B. & B. 215 J 6B.&G. 169.) 
 
 (j) M'Alpinb v. Mangnall. [1846] 
 
 A voluntary assignment of letters patent to trustees for the 
 benefit of creditors more than twelve in number did not avoid the 
 patent. (3 C. B, 496 ; 15 L. J. G. P. 298.) 
 
 (h) Watson v. Holliday (C. A.) [1883] 
 
 An action to restrain infringement and for an account of profits 
 or, in the alternative, damages, is not a claim for unliquidated 
 damages within the prohibition of sect. 31 of the Bankruptcy Act, 
 1869. Consequently when the defendant to such an action had 
 become bankrupt, and had put in a defence but did not appear, 
 and the trustees appeared but put in no defence : — Held, that as the 
 
74 BOARD OF TRADE. 
 
 trustees had not moved to stay the action, nor demurred, there 
 must be an account of profits made by Holliday, and the trustees 
 must pay the costs, (30 W. B. 747; 31 W. B. 636; 52 L. J. Gh. 
 543 ; 48 L. T. 546.) 
 
 Board of Trade, 
 
 may order the grant of compulsory licenses, p. 77 
 
 has power to settle the amount to be paid to a patentee for models 
 
 supplied to the South Kensington Museum, p. 220 
 has power by Patents Act, 1883, sect. 101, to make General Eules, p. 580. 
 There is no definition in the Patents Act of the words Board of Trade, and 
 their meaning is therefore settled by 24 & 25 Vict., ch. 47, sect. 65, to he 
 " The Lords of the Committee of Privy Council appointed for the con- 
 sideration of matters relating to Trade and Foreign Plantations" (^Griff., 
 p. 321) ; but now, by the Patents Act of 1888, it is provided (sect. 25) : 
 
 After section one hundred and two of the principal Act the following 
 section shall be added and numbered 102a ; namely, 
 
 "(1.) All things required or authorised under this Act to be done by, to, 
 or before the Board of Trade, may be done by, to, or before the 
 President or a secretary or an assistant secretary of the Board. 
 " (2.) All documents purporting to be orders made by the Board of 
 Trade and to be sealed with the seal of the Board, or to be signed 
 by a secretary or assistant secretary of the Board, or by any 
 person authorised in that behalf by the President of the Board, 
 shall be received in evidence, and shall be deemed to be such 
 orders without further proof, Unless the contrary is shown. 
 " (3.) A certificate, signed by the President of the Board of Trade, that 
 any order made or act done is the order or act of the Board, shall 
 be conclusive evidence of the fact so certified." 
 
 Book, publication in. See under Novelty, pp. 244 to 261. 
 
 Books, inspection of defendant's. See pp. 319 («), 326 (z). 
 
 Cancelling Letters Patent. See p. 151 (u). 
 
 Caveat against extension, p. 107 
 
 practice of entering is discontinued except by special leave, p. 41 {p). 
 
 Certificate that validity of patent came in question. See under Practice, 
 Costs, pp. 389 (5I), 390 (m) (n), 392 {y), 393 (/) (jr), 394 {p) (r), 395 (s). 
 
 Certificate that particulars delivered have been proved or have been 
 reasonable and proper. See under Practice, Particulars, pp. 315 to 318. 
 
 Certificate of Secretary for War that invention ought to be kept secret. 
 See Secretary for War, p. 406. 
 
 Certificate of the Comptroller, effect of. 
 
 Patents Act, 1883, sect. 96. A certificate purporting to be under the 
 hand of the comptroller as to any entry, matter, or thing which he is 
 authorised by this Act, or any general rules made thereunder, to make or do, 
 shall he prima facie evidence of the entry having been made, and of the 
 contents thereof, and of the matter or thing having been done or left undone. 
 
COLONIES. 75 
 
 Certificates of Payment and Renewal. 
 
 Patent Rules, 1890, 45 and 47, provide for the leaving of certificates of 
 payments of fees on renewal at the Patent OfBoe, and Rule 48 provides for 
 the giving out to the patentee of a certificate of renewal. 
 
 Certified Copies. 
 
 Patents Act, 1883, sect. 89. Printed or written copies Or extracts, pur- 
 porting to he certified by the comptroller and sealed with a seal of the Patent 
 Office, of or from patents, specifications, disclaimers, and other documents in 
 the Patent Office, and of or from registers and other books kept there, shall 
 be admitted in evidence in all courts in Her Majesty's dominions, and in all 
 proceedings, without further proof or production of the originals. 
 
 Patent Rules, 1890, rule 79. Certified copies of any entry in the register, 
 or certified copies of, or extracts from, patents, specifications, disclaimers, 
 affidavits, statutory declarations, and other public documents in the Patent 
 Office, or of or from registers and other books kept there, may be furnished 
 by the comptroller on payment of the prescribed fee. 
 
 Channel Islands. 
 
 Sect. 18 of the Act of 1852 provided that letters patent should extend to 
 Great Britain and Ireland, the Channel Islands, and the Isle of Man. This 
 Act is now repealed by Patents Act, 1883, sect. 113, and the Channel Islands 
 are not included in sect. 16 of that Act. (See p. 205.) 
 
 Cheapness of Materials. 
 
 The mere quality of cheapness in the material disoonliected with any new or 
 different mode of applying that material is not patentable. (See Curtis, 
 sect. 73.) 
 
 Chemical equivalents. See Infringement, Equivalents, p. 183. 
 
 Chemical process may be subject-matter of patent. 
 
 Patterson «?. Gaslight and Coke Company. 
 
 A new chemical process is a proper subject for a patent, but not 
 a tnere instruction for th6 more efficient working of a known 
 process, although formed on a new theoretical explanation. {L. B. 
 2 Ck. D. 812 : 3 A;pp. C. 246.) 
 
 Claim. See under Specification Complete, pp. 481 to 485. 
 
 Clerical Errors. See Amendmentj pp. 28 to 30. 
 
 Colonies, 
 
 definition of British possession. Patents Act, 1883, sect. 117, p. 70 
 arrangements for mutual protection of inventions with. Patents Act, 1883, 
 
 sect. 103, p. 61, sect. 104, p. 75 
 prior user in does not invalidate patent, p. 227 (n). 
 
 Patents Act, 1883, sect. 104. (1) Where it is made to appear to Her 
 Majesty that the legislature of any British possession has made satisfactory 
 provision for the protection of inventions, designs, and trade marks, patented 
 or registered in this country, it shall be lawful for Her Majesty from time to 
 time, by Order in Council, to apply the provisions of the last preceding 
 
76 COLOURABLE IMITATION. 
 
 section, with such variations or additions, if any, as to Her Majesty in 
 Council may seem fit, to such British possession. 
 
 (2) An Order in Council under this Act shall, from a date to be mentioned 
 for the purpose in this Order, take effect as if its provisions had been con- 
 tained in this Act ; but it shall be lawful for Her Majesty in Council to 
 revoke any Order in Council made under this Act. 
 
 [For the provisions of Sect. 103, see p. 61.] 
 
 Sect. 117. (1) In and for the purposes of this Act, unless the context other- 
 wise requires, ..." British possession " means any territory or place situate 
 within Her Majesty's dominions, and not being or forming part of the United 
 Kingdom, or of the Channel Islands, or of the Isle of Man, and all territories 
 and places under one legislature, as hereinafter defined, are deemed to be one 
 British possession for the purposes of this Act. 
 
 " Legislature " includes any person or persons who exercise legislative 
 authority in the British possession ; and where there are local legislatures as 
 well as a central legislature, means the central legislature only. 
 
 Colourable imitation. See Infringement, Colourable imitation, 
 pp. 183 to 202. 
 
 Combination. See Subject Matter, Combination, pp. 500 to 511. 
 
 Commissioners' OflSces. 
 
 The offices of the Commissioners of Patents at 25 Southampton Buildings, 
 became the new Patent Office by virtue of sect. 82 of the Act of 1883. 
 
 Communication, 
 
 from abroad, the subject of a patent, p. 278 
 improvement on confidential, p. 278 (e) 
 patent for, taken as for original invention, is void, p. 278 (e) 
 petition for extension should state when patent is for, p. 104 (6) 
 from abroad, to be distinguished in specification fromoriginal invention, 
 p. 449 (a). 
 
 Company, 
 
 person includes a body corporate. Patents Act, 1883, sect. 117, p. 76 
 may be registered by its corporate name,'PatentiEules, 1890, 73, p. 76 
 request for entry of subsequent proprietorship by, to be signed by agent 
 
 authorised to satisfaction of comptroller, Eule 69, p. 398 ■ 
 form of application, how signed, p. 76 
 foreign corporation can apply under sect. 103, p. 76 Q). 
 
 Patents Act, 1883, sect. 117. In and for the purposes of this Act, unless 
 the context otherwise requires, " Person " includes a body corporate. 
 
 Patent Eules, 1890, 73. A body corporate may be registered as proprietor 
 by its corporate name. 
 
 [In the case of application for a patent by a company the form should be 
 signed by the secretary and two directors and the common seal affixed. 
 (Oriff. 325.)] 
 
 (T) Caeez's Application. [1889] 
 
 Semhle, foreign corporations can apply under sect. 103 of the 
 statute of 1883. (6 0. B. 652.) 
 
 Complete Specification. See pp. 421 to 490. 
 
COMPULSOEY LICENSES. 77 
 
 Comptroller, 
 
 definition of, Patents Act, 1883, sect. 117, p. 77 
 limit on tlisoretionaiy power of, sect. 94, p. 84 
 may be heard on appeal to the law officer, pp. 32 and 379 
 power of, to refer application to examiner, sect. 6, p. 34, sect. 9, p. 35 
 require amendment, sects. 7 and 9, pp. 9, 10 
 decide' between applicant and opponent, p. 38 
 seal patent, sect. 12, p. 148, and sect. 37, p. 82 
 enlarge time for payment of renewal fee, p. 559 
 extend time, p. 557 
 
 allow amendment of specification, p. 10 
 refuse a grant contrary to law or morality, p. 396 
 make entries in register, sect. 87, p. 397 
 certify copies, sect. 89, p. 75 
 take directions of law officer, sect. 95, p. 83 
 dispense with evidence, Eule 80, p. 77. 
 
 Patents Act, 1883, sect. 117. In and for the purposes of this Act, unless 
 the context otherwise requires, "Comptroller" means the Comptroller- 
 General of Patents, Designs, and Trade Marks. 
 
 Patent Rules, 1890, rule 80. Where under these Eules, any person is 
 required to do any act or thing, or to sign any document, or to make any 
 declaration on behalf of himself or of any body corporate, or any document or 
 evidence is required to be produced to or left with the comptroller, or at the 
 Patent Office, and it is shown to the satisfaction of the comptroller that from 
 any reasonable cause such person is unable to do such act or thing, or to 
 sign such document, or make such declaration, or that such document or 
 evidence -cannot be produced or left as aforesaid, it shall be lawful for the 
 comptroller, with the sanction of the Board of Trade, and upon the production 
 of such other evidence and subject to such terms as they may think fit, to 
 dispense with any such act or thing, document, declaration, or evidence. 
 
 Compulsory Licenses. 
 
 Patents Act, 1883, sect. 22. If on the petition of any person interested 
 
 it is proved to the Board of Trade that by reason of the default of a patentee 
 
 to grant licenses on reasonable terms — > 
 
 (a) The patent is not being worked in the United Kingdom ; or 
 
 (6) The reasonable requirements of the public with respect to the 
 
 invention cannot be supplied ; or 
 (c) Any person is prevented from working or using to the best advantage 
 an invention of which he is possessed, 
 the Board may order the patentee to grant licenses on such terms as to the 
 amount of royalties, security for payment, or otherwise, as the Board, having 
 regard to the nature of the invention, and the circumstances of the case, may 
 deem just, and any such order may be enforced by mandamus. 
 
 [But this provision is not to affect patents granted before the commence- 
 ment of the Act or on an application then pending (see p. 94).] 
 
 Patent Kcjles, 1890. 60. A petition to the Board of Trade for an order 
 upon a patentee to grant a license shall show clearly the nature of the 
 petitioner's interest, and the ground or grounds upon which he claims to be 
 entitled to relief, and shall state in detail the circamstanoes of the case, the 
 terms upon which he asks that an order may be made, and the purport of 
 such order. 
 
 61. The petition and an examined copy thereof shall be left at the Patent 
 Office, accompanied by the affidavits, or statutory declarations, and other 
 
78 CONCEALMENT. 
 
 documentary evidence (if any) tendered by the petitioner in proof of the 
 alleged default of the patentee. 
 
 62. Upon perusing the petition and evidence, unless the Board of Trade 
 shall be of opinion that the order should be. at once refused, they may require 
 the petitioner to attend before the comptroller, or other person or persons 
 appointed by them, to receive his or their directions as to further proceedings 
 upon the petition. 
 
 63. If and when a prima facie case for relief has been made out to the 
 satisfaction of the Board of Trade, the petitioner shall upon their requisition, 
 and on or before a day to be named by them, deliver to the patentee copies of 
 the petition and of the affidavits or statutory declarations and other documen- 
 tary evidence (if any) tendered in support thereof. 
 
 64. Within fourteen days after the day of such delivery the patentee shall 
 leave at the Patent 06Bce his affidavits or statutory declarations in opposition 
 to the petition, and deliver copies thereof to the petitioner. 
 
 65. The petitioner within fourteen days from such delivery shall leave at 
 the Patent Office his affidavits, or statutory declarations in reply, and dehver 
 copies thereof to the patentee ; such last-mentioned affidavits or declarations 
 shall be confined to matters strictly in reply. 
 
 66. Subject to any further directions which the Board of Trade may give 
 the parties shall then be heard at such time, before such person or persons, in 
 such manner, and in accordance with such procedure as the Board of Trade 
 may, in the circumstances of the case, direct, but so that fuU opportunity 
 shall be given to the patentee to show cause against the petition. 
 
 Concealmeilt in specification as to best mode of working will invalidate 
 patent, p. 436, sej. 
 
 Concurrent Applicants. See Application for Letters Patent, Concur- 
 rent Applicants, pp. 54 to 56. 
 
 Conditions of Grant. See Grant — Conditions of, p. 148. 
 
 Confidential Disclosure, communication made to public officers io 
 course of duty cannot be, p. 254 (i). 
 
 Confirmation. 
 
 The power to confirm which was granted by 5 & 6 Will. TV., ch. 83, sect. 2, 
 appears to be taken away by the repeal of that statute by 46 & 47 Vict, 
 ch. 57, sect. 113. The following cases which dealt with confirmation have 
 therefore been omitted. 
 
 Westeupp and Gibbin's Patent. (1 Web, P. G. bbb.') 
 
 Heurtiloup's Patent. (1 Web. P. G. 553.) 
 
 Eobinson's Patent. (5 Moore P. 0. C. 66.) 
 
 Stead's Patbnt. (2 Web. P. G. 146.) 
 
 Card's Patent. (2 Weh. P. 0. 161, 12 Jur. 607, 6 Moore P. G. C. 
 207.) 
 
 Lameneaude's Patent. (2 Web. P. G. 164.) 
 
 Honiball's Patent. (2 Web. P. C. 201 ; 9 Moo. P. G. G. 378.) 
 
 Stead v. Carey. (1 G. B. 496 ; 9 Jur. 511 ; 14 L. J. G. P. 177.) 
 
CROWN. 79 
 
 Consideration of Grant. See Grant, Ooosideration of, p. 149. 
 Consolidation. See Practice, Consolidation, p. 293. 
 Construction. See Specification, Consti-uction, p. 460. 
 Constructive use. See Infringement, pp. 183, seq. 
 Contrivance. Application of an old. See Subject-matter, p. 522. 
 Co-owners. See Joint Owners, pp. 206 to 209. 
 Copies. See Certified Copies, p. 75. 
 Corporation. See under Company, p. 76. 
 Correction. See Amendment, pp. 8 to 30. 
 Costs. See Practice, Costs, pp. 382 to 395. 
 
 Court. 
 
 Patents Act, 1833, sect. 117. In and for the purposes of this Act, unless 
 the context otherwise requires, " The Court " means (subject to the provisions 
 for Scotland, Ireland, and the Isle of Man) Her Majesty's High Court of 
 Justice in England. 
 
 Crown, 
 
 effect of patent against. Patents Act, 1883, sect. 27, p. 79 
 prerogative of. Patents Act, 1883, sect. 116, p. 79 
 private contiactors not servants of, p. 80 (o). 
 
 Patents Act, 1883, sect. 27. (1.) A patent shall have to all intents the 
 like effect as against Her Majesty the Queen, her heirs and successors, as it 
 has against a subject. 
 
 (2.) But the officers or authorities administering any department of the 
 service of the Crown may, by themselves, their agents, contractors, or others, 
 at any time after the application, use the invention for the services of the 
 Crown on terms to be before or after the use thereof agreed on, with the 
 approval of the Treasury, between those oificers or authorities and the 
 patentee, or, in default of such agreement, on such terms as may be settled 
 by the Treasury after hearing all parties interested. 
 
 [But these provisions are not to affect any patent granted before the com- 
 mencement of the Act or on an application then pending (see p. 94).] 
 
 Sect. 116. Nothing in the Act shall take away, abridge, or prejudicially 
 affect the prerogative of the Crown in relation to the granting of any letters 
 patent or to the withholding a grant thereof. 
 
 (m) Feather v. The Queen. [1865] 
 
 Formerly tlie Crown might use a patented invention witliout 
 the assent or remuneration of the patentee. (8 B. & S. 257.) 
 
 (m) Caldwell v. Vanvlissengen. [1851] 
 
 The Crown has always exercised a control over the trade of the 
 country ; and though restrained by the common law and the 
 
80 DAMAGES. 
 
 Statute of Monopolies (21 Jao. 1 ch. 3) within reasonable limits, 
 the Crown might grant the exclusive right to trade with a new 
 invention for a limited period. (9 Hare, 415, 16 Jur. 115, 21 
 L. J. Gh. 97.) 
 
 (o) Dixon v. The London Small Arms Company. [1877] 
 
 A patent was granted for an improvement in the manufacture 
 of fire-arms. The Secretary for War issued a notice for a tender 
 for the supply of 13,875 rifles of the description known as that 
 patented, the War Office supplying the steel barrels and the stocks. 
 The rifles might be inspected during manufacture and might be 
 rejected by officers at the War Office if not made according to 
 pattern or not delivered in time. The contractors employed the 
 patented process in the formation and insertion of the lock : — Held, 
 that they were not servants or agents of the Crown doing the 
 work of the Crown, but were private contractois to supply a 
 certain manufactured article and were liable for infringement, 
 (i. B. 1 App. a 632.) 
 
 Damages. See under Practice, Damages, p. 373. 
 
 Date of Patent, 
 
 to te date of application. Patents Act, 1883, sect. 13, p. 80 
 
 in case of revocation on ground of fraud. Patents Act, 1883, sect. 26, p. 402 
 
 in case of invention patented abroad, sect. 103, Patents Act, 1883, 
 
 amended by Patents Act, 1885, sect. 6, p. 61 
 of patents separated by amendment. Rule 19, p. 37 
 of extended grant may be after expiration of orissinal patent, p. 133 (/). 
 
 Patents Act, 1883, sect. 13. Every patent shall be dated and sealed as of 
 the day of the application : Provided that no proceedings shall be taken in 
 respect of an infringement committed before the publication of the complete 
 specification : Provided also, that in case of more than one application for a 
 patent for the same invention, the sealing of a patent on one of those appli- 
 cations shall not prevent the sealing of a patent on an earlier application. 
 
 (p) EussEL V. Ledsam. [1845] 
 
 Original letters patent for a term of fourteen years were dated 
 on the 26th of February 1825, and renewed letters patent were 
 dated on the 26th of February 1839 : — Held, that the day of the date 
 must be reckoned inclusively, and that the former term expired on 
 the 25th of February 1839, and consequently the renewed letters 
 patent were granted after the original letters patent had expired. 
 Eenewed letters patent, granted under 5 & 6 Will. 4, c. 83, s. 4, are 
 not void if dated after the expiration of the term for which the 
 original letters patent were granted, but may be granted by the 
 Crown after the expiration of that term, provided the preliminary 
 steps which the fourth section of the Act requires to be taken by 
 the patentee were complied with before that term ended. See 
 2 & 3 Vict. c. 67. (14 M. & W. 574 ; 14 L. J., Exch. 353 ; affirmed 
 in Exch. Ch., 16 M. & W. 633; and in House of Lords, 1 H. L. 
 Cos. 687.) 
 
DECLAEATION. 81 
 
 (q) Williams v. Nash. [1859] 
 
 The day of the date of the letters patent is excluded, and the 
 three years do not expire until 12 o'clock at night of the anni- 
 versary of the day on which the letters patent are granted. 
 (5 Jur. N. S. 696 ; 28 L. J. Gh. 886 ; 28 Beav. 93.) 
 
 (r) Ex parte Bailey. [1872] 
 
 B. applied for a patent and obtained provisional protection on 
 the 30th .of March ; 0. on the 3rd of April. B. applied for the 
 great seal on the 21st of May ; G. obtained letters patent on the 
 22nd of May, antedated, according to the usual practice, to the 
 3rd of April. The patents appearing to be partially for the same 
 invention : — Held, that -whether the conduct of 0. had or had not 
 been fraudulent, the letters patent granted to B. must bear date 
 on the 21st of May, and not on the 30th of March. (L. B. 8 Gh. 
 60 ; 42 L. J. 264.) 
 
 Death of Inventor. 
 
 Patents Act, 1883, sect. 12, sub-seot. 3 (b). If the person making the 
 application dies before the expiration of the fifteen months aforesaid, the 
 patent may be granted to his legal representative, and sealed at any time 
 within twelve months after the death of the applicant. 
 
 [The fifteen months referred to runs from the date of application. 
 See p. 557.] 
 
 Sect. 34. (1) If a person possessed of an invention dies without making 
 application for a patent for the invention, application may be made by, and 
 a patent for the invention granted to, his legal representative. 
 
 (2.) Every such application must be made within six months of the decease 
 of such person, and must contain a declaration by the legal representative 
 that he believes such person to be the true and first inventor of the 
 invention. 
 
 Declaration. 
 
 Patents Act, 1883, sect. 5, sub-sect. (2). An application must contain a 
 declaration to the effect that the applicant is in possession of an invention, 
 whereof he, or, in the case of a joint application, one or more of the applicants, 
 claims or claim to be the true and first inventor or inventors, and for which 
 he or they desires or desire to obtain a patent ; and must be accompanied by 
 either a provisional or complete specification. 
 
 48 & 49 Vict. ch. 63, sect. 2. Whereas sub-sect. 2 of sect. 5 of the principal 
 Act requires a declaration to be made by an applicant for a patent to the 
 effect in that sub-sect, mentioned, and doubts have arisen as to the nature of 
 that declaration, and it is expedient to remove such doubts : Be it therefore 
 enacted that : 
 
 The declaration mentioned in sub-sect. 2 of sect. 5 of the principal Act may 
 be either a statutory declaration under the Statutory Declarations Act, 1835, 
 or not, as may be from time to time prescribed. 
 
 Patents Act, 1883, sect. 99. If any person is, by reason of infancy 
 lunacy or other inability, incapable of making any declaration or doing 
 anything required or permitted by this Act or by any rules made under the 
 authority of this Act, then the guardian or committee (if any) of such 
 incapable person, or if there be none, any person appointed by any court or 
 judge possessing jurisdiction in respect of the property of incapable persons, 
 upon the petition of any person on behalf of such incapable person, or of any 
 
 G 
 
82 DEDICATION. 
 
 other person interested in the making such declaration or doing such thing, 
 may make such declaration or a declaration as nearly corresponding thereto 
 as circumstances permit, and do such thing in the name and on behalf of 
 such incapable person, and all acts done by such substitute shall for the 
 purposes of this Act be as effectual as if done by the person for whom he la 
 substituted. 
 
 Dedication, 
 
 none by abandoned provisional specitication until end of provisional 
 
 protection, pp. 248 («/), 258 (r) 
 none bv hona fide experiment although used in carrying out contract, 
 
 p. 237 (p) 
 nor by disclosure to persons under obligation to keep it secret, p,'. 242 (d), 
 
 263 (i) 
 unless ma'Ie for purpose of using invention, p. 243 (h) 
 by disclosure to public official although confidential, p. 254 (t). 
 
 Default in payment of fees. See p. 559. 
 
 Definitions. See under the various beads. 
 
 Delay, 
 
 in enrolling specification, pp. 58, 59 
 
 in applying for great seal, p. 60 (o) 
 
 in application for letters patent, pp. 58, 59 
 
 in entering opposition to sealing, p. 41 (n) (o) 
 
 in filing affidavits on opposition to sealing, p. 41 («) 
 
 iu application for injunction, pp. 346 to 349 
 
 in using invention, does not prove inutility, pp. 575 (m), 577 (x) 
 
 in filing accounts on petition for extension, p. 126 {z) 
 
 in establishing plaintiff's title in suit, p. 337 {p) 
 
 a ground for refusing to decree an account, p. 348 (k) 
 
 caused by appeal to law officer, p. 82. 
 
 Patents Act, 1883, sect. 12, sub-sect. 3 (a). "Where the sealing is delayed 
 by an appeal to the law officer, or by opposition to tlie grant of the patent, 
 the patent may be sealed at such time as the law officer may direct. 
 
 Delivering up Articles. See Destruction, p. 82. 
 
 Destroyed Patent. 
 
 Patents Act, 1883, sect. 37. If a patent is lost or destroyed, or its 
 non-production is accounted for to the satisfaction of the comptroller, the 
 comptroller may at any time cause a duplicate thereof to be sealed. 
 
 The form of application for a duplicate is Form N in Schedule II. 
 
 The fee for a duplicate is £2. See p. 143. 
 
 Destruction of Property made in infringement of patent. 
 (t) Vavasseue v. Keupp. [1878] 
 
 There is a right of property in the infringer in an article made 
 in infringement of a patent, although the Court may order the 
 article to be destroyed, (i. B., 9 Gh. I). 351.) 
 
 Cotton, L.J. : " The property in articles which are made in 
 violation of a patent is, notvp^ithstanding the privilege of the 
 patentee, in the infringer, if he would otherwise have the property 
 in them. The Court, in a suit to restrain the infringement of a 
 patent, does not proceed on the footing that the defendant proved 
 
DISCOVEEIES. 83 
 
 to have infringed has no property in the articles ; hut, assuming 
 the property to be in him, it prevents the use of those articles, 
 either by removing that which constitutes the infringement, or 
 by ordering, if necessary, a destruction of the articles so as to 
 prevent them from being used in derogation of the plaintiff's 
 rights, and does this as ttie most effectual mode of protecting the 
 plaintiff's rights — ^not on the footing that there is no property in 
 the defendant. The Court cannot proceed to give that relief, and 
 interfere with the articles, unless it has before it the person 
 entitled to the articles in question, and has, as against this person, 
 power to adjudicate that the articles are made or used in infringe- 
 ment of the plaintiff's rights." (lb. 360.) 
 
 Directions, comptroller may ask for. 
 
 Patents Act, 1883, sect. 95. The comptroller may, in any case of doubt 
 or difficulty arising in the administration of any of the provisions of this Act, 
 apply to either of the law officers for directions in the matter. 
 
 Directors 
 
 personally responsible for infringement, p. 83 (u) 
 form of order against, p. 83 (v). 
 
 (u) Betts v. De Vitee. [1868] 
 
 The directors of a company are personally responsible for the 
 infringement of a patent by their workmen, notwithstanding such 
 infringement may be in contravention of orders. (L. B. 3 Ch. 441 ; 
 37 L. J., Ch. 325 ; 16 W. B. 529.) 
 
 The directors, acting as agents of the company, had infringed 
 the patent, and a decree had been made against the directors 
 as well as the company, and it had been held that the directors 
 were personally liable to pay the costs. (11 Jur. N. S. 9.) 
 
 (v) Spencer v. The Ancoats Vale Eubbee Company. [1888] 
 
 It having been found that the defendant company had com- 
 mitted breaches of an injunction to which they had consented, a 
 sequestration was directed in case the company did not comply, 
 with the order with costs on the higher scale, the order to be 
 against the directors as well as the company, but not to be enforced 
 agaiast the directors, except in case of default in payment by the 
 company. (T. L. Rep. 4, 681.) 
 
 Disclaimer. See Amendment, pp. 8 to 28. 
 
 Discoveries, effect of new. 
 
 (w) Ceossley v. Beveeley. [1829] 
 
 A patent is not vitiated by reason of the specification not 
 applying to matters of subsequent discovery. The terms of the 
 specification must be interpreted according to the state of know- 
 ledo-6 at the time. The patentee must be understood to mean 
 things that were in use, and not things which, from being too 
 expensive, were never expected to be used. (1 Web. P. 0. 106.) 
 
 a 2 
 
84 DISCOVERY. ' 
 
 Discovery, "See Practice, pp. 318 to 324. 
 Discovery disclosed in confidence. 
 Smith v. Dickinson. [1804] 
 
 Action on an agreement by the defendant not to avail himself of 
 a communication made to him by the plaintiff of an invention for 
 which he the plaintiff intended to take ont a patent. Breach, that 
 the defendant fraudulently patented the invention in his own 
 name : — Seld, that the plaintiff could rdcover damages. (3 B. &P. 
 630.) 
 
 Discretion of Comptroller. 
 
 Patents Act, 1883, sect. 94. Where any discretionary power is by this 
 Act given to the coni|)troller, he shall not exercise that power adversely to 
 the applicant for a patent, or for amendment of a specification without (if so 
 required within the prescribed time by the applicant) giving the applicant an 
 opportunity ot being beard personally or by his agent. 
 
 Discretion of Judge as to terms imposed under sect. 19 of the Patents 
 Act, 1883. See p. 22 (»)■ 
 
 Documents. 
 
 Patent Eoles, 1890 (10). All documents and copies of documents, except 
 statutory declarations and affidavits, sent to or left at the Patent OfSoe or 
 otherwise furnished to the comptroller or to the Board of Trade shall be 
 written or printed in large and legible characters in the English language 
 upon strong wide ruled paper (on one side only), of a size of 13 inches by 
 8 inches, leaving a margin of 2 inches on the left-hand part thereof, and the 
 signature of the applicants or agents thereto must be written in a large ami 
 legible hand. Duplicate documents shall at any time be left, if required by 
 the comptroller. 
 
 [Any document required to be left, made or given at the Patent Ofiice, or 
 to the comptroller, or to any other person under the Rules, may be sent by 
 a prepaid letter through the post. (See under Post, p. 279.)] 
 
 Drawings. 
 
 Patents Act, 1883, sect. 5, sub-sect. (3), (4): Amending Act, 1886, 
 
 sect. 2, p. 84 
 Patent Rules, 1890: 30 to 33, pp. 84, 85 
 used to refresh memory of witness, p. 86 (y) 
 effect of, annexed to specification, pp. 485 to 487 
 added to specification after filing, p. 25 (2/) 
 
 Patents Act, 1883, sect. 5, sub-sect. (3). A provisional specification 
 must describe the nature of the invention, and be accompanied by drawings, 
 if required. 
 
 Sub-sect. (4). A complete specification, whether left on application or 
 subsequently, must particularly describe and ascertain the nature of the 
 invention, and in what manner it is to be performed, and must be accompanied 
 by drawings, if required. 
 
 Patents Act, 1886, sect. 2. The requirement of sub-sect. 4 of sect. 5 of the 
 Patents Act, 1883, as to drawings shall not be deemed to be insufficiently 
 complied with by reason only that instead of being accompanied by drawings 
 the complete specification refers to the drawings which accompanied the pro- 
 visional specification. And no patent heretofore sealed shall be invalid by 
 reason only that the complete specification was not accompanied by 
 drawings but referred to those which accompanied the provisional 
 specification. 
 
DRAWINGS. 85 
 
 Patent Rules, 1890. — Rule 30. The provisional or complete specification 
 need not be aoconapanied by drawings if the specification sufficiently, describes 
 the invention without them, but if drawings are furnished, thfey should 
 accompany the provisional or complete specification to which they refer, 
 except in the case provided for by Rule 33. No drawing or sketch such as 
 requires a special engraving for letter-press should appear in the specification 
 itself. 
 
 Rule 31. Drawings (if any) must be delivered at the Patent Office either 
 in a flat state or on rollers, so as to be free from folds, breaks, or creases. 
 
 They must be made on pure white, hot-pressed, _ rolled, or calendered 
 drawing paper of smooth surface and good quality, and where possible 
 without colour or Indian-ink washes. 
 
 They must he on sheets of one oF the two following sizes (the smaller heing 
 preferable), 13 inches at the sides by 8 inches at the top and bottom, or 
 13 inches at the sides by 16 inches at the top and bottom, including margin, 
 which must be i an inch wide. If there are more figures than can be shown 
 on one of the smaller-sized sheets, two or more of these sheets should be used 
 in preference to employing; the larger size. When an exceptionally large 
 drawing is required, it should be continued on subsequent sheets. There is 
 no limit to the number of sheets that may be sent in. 
 
 To ensure their satisfactory reproduction, the drawings must be executed 
 with absolutely black Indian ink ; the same strength and colour of fine and 
 shade lines to be maintained throughout. Section lines, and lines for effect, 
 or shading lines, must not be closely drawn. A specimen drawing is inserted 
 in illustration of this requirement. Reference figures and letters, must be 
 bold, distinct, not less than ^ of an inch in height ; and the same letters 
 should be used in different views of the same parts. In oases of complicated 
 drawings, the reference letters must be shown outside the figure, and 
 connected with the part referred to by a fine line. 
 
 The scale adopted should be large enough to show clearly wherein the 
 invention consists, and only so much of the apparatus, machine, &c.,- need 
 be shown as effects this purpose. When the scale is shown on the drawing 
 it should be denoted, not by words, but by a drawn scale, as illustrated in 
 the specimen. 
 
 Drawings must bear the name of the applicant (and in the case of drawings 
 left with a complete specification after a provisional specification, the number 
 and year of the application) in the left-hand top corner; the number of 
 sheets of drawings sent, and the number of each sheet in the right-hand 
 top corner ; and the signature of the applicant or his agent in the right-hand 
 bottom corner. 
 ' No written description of the invention should appear on the drawings. 
 
 Wood engravings, or representations of the invention, other than the 
 ■drawings prepared as above described, will not be received, unless of such 
 a character as to be suitable for reproduction by the process of photo- 
 lithography. 
 
 Rule 32. A facsimile of the original drawings, but without colour or 
 Indian-ink washes, and prepared strictly in accordance with the regulations 
 prescribed in Rule 31, must accompany the originals, and be marked 
 " true copy." 
 
 Rule 33. If an applicant desires to adopt the drawings lodged with his 
 provisional specification as the drawings for his complete specification, he 
 should refer to them as those " left with the provisional specification." 
 
 (x) BouLTON V. Bull. [1795] 
 
 Formerly it was not necessary for the patentee to use drawings, 
 provided he so described the improvement as to enable artists to 
 adopt it when his monopoly expired. (2 H. Bl. 479.) 
 
86 DUPLICATE. 
 
 Drawings used to refresh memory of Witness. 
 
 (y) E. V. Hadden. [1826] 
 
 , In proving that a machine is not new you may show a witness 
 who had constructed a machine for the same purposes a drawing 
 not made by himself, and ask him whether he has such a recol- 
 lection of the machine he made as to be able to say that that is a 
 correct drawing of it. (2 G. & P. 184.) 
 
 Duplicate. See Destroyed Patent, 82. 
 
 Duplicate documents shall at any time be left if required by the Comp- 
 troller. See p. 84. 
 
 Duration. See Time, p. 556 
 
 Extension of Term, p. 95. 
 
 15 & 16 Vict. c. 83, sect. 25, provided that a patent, obtained here for an 
 invention iirst invented in a foreign country or by a foreigner, which had 
 already been patented abroad, should cease on the expiration of the foreign 
 patent. This is now repealed by 46 & 47 Vict. ch. 57, s. 113. 
 
 Enlargement of Time. See under Time, Patents Act, 1883, sect. 17, 
 p. 559. 
 
 Equity. See Practice. 
 
 Equivalents. See Infringement, equivalent, pp. 183-202 
 
 if not known at date of patent, are not included in specification, p. 481 (rt) 
 
 Errors, 
 
 Verbal, in specification, p. 461 (m) 
 
 clerical, amendment of, in specification, pp. 28, 29 
 
 in memorandum of alteration, p. 29 (y) 
 in enrolment of patent, pp. 29 (g), 30 (s) 
 of specification, p. 29 (») 
 
 in specification, correction of, by workmen, pp. 484 {x), 430 (f) 
 
 in drawings, p. 430 (t) 
 
 Estoppel, 
 
 in actions, by patentee against licensee where licence is exclusive, 
 pp. 90 (i), 211 (m) 
 
 where licence is not exclusive, pp. 87 (h), 89 Qi), 90 (i) (y) Q), 
 
 91(0) 
 where use of and payments under licence have ceased, pp. 88 
 
 (d), 91 (r) 
 where patent held invalid in proceedings between patentee 
 
 and third party, p. 90 (m) 
 by assignee agaiast patentee, pp. 87 (z), 90 (it) 
 by patentee against equitable assignee of sole licensee, p. 89 (/) 
 of no avail where plaintiff fraudulently claims right to patent, p. 87 (o) 
 as to use or non-use of licence under agreement, p. 88 (d) 
 under special agreement, p. 89 (g) 
 not established by award of arbitrator, p. 90 (ra) 
 construction of specification independent of, p. 91 {jo) 
 between partners, pp. 91 (q) (t), 338 (s) 
 
 by judgment at law need not aifect defendants in equity, p. 91 (s) 
 effect of previous decisions as to same patent, p. 92 (x) 
 
ESTOPPEL. 87 
 
 («) Oldham v. Langmead. [Before 1789] 
 
 In an action by the assignee of the patentee against the 
 patentee, the latter is estopped from showing that it was not a 
 new invention against his own deed. (Cit. in Sayne v. Malthy, 
 3 T. B. 439.) 
 
 Lord Kenyon, C.J. : " The patentee has conveyed his interest 
 in the patent to the plaintiff, and yet in violation of his contract 
 he afterwards infringed the plaintiff's right, and then attempted 
 to deny his having had any title to convey ; bnt I was of opinion 
 that he was estopped by his own deed from, making that defence." 
 {lb. 441.) 
 
 (a) Hayne v. Maltby. [1789] 
 
 A., fraudulently asserting that he had a right to a patent 
 machine, covenanted with B. that he should use it in a particular 
 manner, in consideration of which B. covenanted that he would 
 not use any other ; in an action by A. on the covenant, B. is not 
 estopped by his covenant from pleading in bar to the action that 
 the invention was not new, or that the patentee was not the in- 
 ventor ; but he may thus show that the patent was void. (3 T. B. 
 438 ; Bav. P. G. 156.) 
 
 (6) Bowman v. Taylor. [1834] 
 
 Where a licence to use certain patent machines is granted by 
 indenture, in which it is recited that the grantor has invented 
 the machines, and has obtained letters patent for the sole use of 
 the invention, and enrolled the specification, parties to the deed 
 are estopped from pleading, either that the invention is not a 
 new invention, or that the grantor was not the first inventor, 
 or that no specification was enrolled. (4 N. & M. 264 ; 2 A. & E. 
 278.) 
 
 (c) Neilson v. Fotheegill. Ch. [1841] 
 
 Lord Cottenham, L.C. : " The ease of Hayne v. Maltby appears 
 to me to come to this — that although a party has dealt with 
 the patentee and has carried on business, yet that he may stop, 
 and then the party who claims to be patentee cannot recover 
 without giving the other party the opportunity of disputing 
 his right, and that if the defendant successfully dispute his 
 right, that notwithstanding he has been dealing under a con- 
 tract, it is competent to the defendant so to do. That is exactly 
 coming to the point which I put, whether, at law, the party 
 was estopped from disputing the patentee's right, after having 
 once dealt with him as the proprietor of that right; and it 
 appears from the authority of that case, and from the other cases, 
 that from the time of the last payment, if the manufacturer 
 can successfully resist the patent right of the party claiming 
 the rent, that he may do so in answer to an action for the 
 rent for the use of the patent during that year." (1 Web. P. G. 
 290.) 
 
88 ESTOPPEL. 
 
 (d) Baied j;. Neilson. H. L. [1842] 
 
 N. obtained a patent for the application of tlie principle of 
 Smelting iron by the use of heated, air applied to furnaces. B. 
 obtained a licence from him to use this process, on the payment 
 of Is. per ton on the iron thus smelted. Disputes, and then 
 litigation, arose between them, and it was agreed by an instru- 
 ment in writing, dated 11th of November, 1833 (which recited 
 the previous circumstances), that both parties should withdraw 
 their law processes; that, — "in consideration of the present pay- 
 mant of £400 to be accepted by N. in full of 1«. per ton on the 
 whole iron smelted from the erection of B.'s wurks up to the 
 11th of November current, and in consideration of the payment 
 of Is. per ton upon the whole iron which shall be smelted from 
 the 11th of November current until the expiry of the letters 
 patent, by the use of heated air in any of the modes heretofore 
 applied, or in any other mode falling under the said patent," — 
 N. should grant to B. a licence, which fuither on in the agree- 
 ment was described to relate to " the application or use of heated 
 air in any of the modes heretofore practised at B.'s works, or 
 in any other mode falling under the description in the said 
 patent, or in the specification thereof." N. afterwards instituted 
 a suit to compel B. to perform this agreement. B. instituted 
 a cross suit to suspend N.'s proceedings, on the ground that 
 the process of smelting by heated air, used at B.'s works, did 
 not fall within the patent ■.—Held, by the Lords, afBrming the 
 decree of the Court of Sessions, that, after this agreement, B. 
 could not set up such a defence to the claim of N. (8 0. & F. 
 726.) 
 
 (e) Cutler v. Bowee. [1848] 
 
 By an indenture reciting a deed, whereby the plaintiff licensed 
 the defendant to use his patent during a term, paying a certain 
 royalty, plaintiff, in consideration of £2200 to be paid to him by 
 defendant, assigned the patent to a trustee, subject to the previous 
 indenture, and in trust to apply the sums accruing from licences 
 and the royalties, for or under the direction of plaintiff and 
 defendant respectively, in specified proportions, and to stand 
 possessed, as to one moiety of the letters patent, for plaintiff, as to 
 the other, for defendant. Plaintiff covenanted that, for and 
 notwithstanding anything done, &c., by him, the patent was valid, 
 and defendant covenanted with plaintiff to pay him the £2200 by 
 instalments. To a declaration for non-payment of such instal- 
 ments, defendant pleaded that plaintiff was not the first inventor ; 
 by reason whereof the patent, before the supposed breach of 
 covenant, was void. Eeplication, estoppel : — Meld, on general 
 demurrer, that the plea was bad. For, 
 
 1. Even if the patent was void, the first executed deed would 
 have bound the defendant, by estoppel, to payment of the 
 royalty ; and, by the latter deed, he became entitled to half the 
 royalty. 
 
 2. The covenant to pay the £2200 was an independent covenant, 
 
ESTOPPEL. 89 
 
 and capable of being enforced whether the plaintiff's covenants 
 were performed or not. (11 Q. B. 973 ; 17 X. J., Q. B. 217 ; 12 
 Jur. 721.) 
 
 (/) PiDDiNG V. Feanks. [1849] 
 
 Where the court directed an action, instead of granting an 
 injunction, against the equitable assignee of the sole licensee of a 
 patent, it did not exact from the defendant any admission as to 
 the validity of the patent. (1 Mac. & O. 66.) 
 
 {g) Hills v. Laming. [1853] 
 
 By articles of agreement under seal, reciting that letters patent 
 had been granted to the defendant for improvements in purifying 
 gas, and other letters patent had been granted to the plaintiff for 
 an improved mode of manufacturing gas, and that disputes had 
 arisen between the parties as to their respective rights under the 
 letters patent to the use of oxides of iron for the purpose of 
 purifying gas, and that a scire facias had been sued out by the 
 plaintiff to repeal the patent granted to the defendant, and that 
 other patents had been applied for, it was agreed, that the 
 defendant should have the exclusive use of the inventions granted 
 to the plaintiff, so far as the same related to the purification of gas 
 by the hydrated oxides of iron, paying certain royalties ; that the 
 plaintiff should have the exclusive use of the inventions granted 
 to the defendant, so far as the same related to the purification of 
 gas by anhydrous oxides of iron, paying certain royalties ; that, 
 for the purpose of that agreement and the determination of the 
 amount of royalties it should be assumed that the defendant was 
 entitled to the exclusive use of anhydrous oxides, and the plaintiff 
 entitled to the exclusive use of hydrous oxides. The agreement 
 also provided in case of breach of certain stipulations, for payment 
 of a certain sum as liquidated damages. In an action to recover 
 that sum the defendant pleaded the plaintiff's patents were not 
 valid, that the inventions were not new, and that the plaintiff was 
 not the first inventor : — Held, that the pleas were bad, inasmuch 
 as the defendant was estopped by the agreement from disputing 
 the validity of the patents. (9 Hxch. 256 ; 23 L. J., Exch. 60.) 
 
 (A) Lawes v. Puesee. [1856] 
 
 Declaration for money payable by the defendant to the plaintiff, 
 due by agreement, in respect of manure manufactured or sold by 
 the defendant pursuant to the plaintiff's permission, by the use of 
 an invention mentioned in letters patent granted to the plaintiff. 
 Plea, that at the time of the agreement, and since, the letters 
 patent were void ; that the defendant was, before and at the time 
 of the agreement, entitled as of right, and without permission of 
 the plaintiff, to use the invention and sell the manure ; and there 
 was not any consideration for the agreement: — Seld, that the 
 declaration was upon an executed consideration, and that the plea 
 was no answer. (6 Ell. & B. 930; 3 Jur., N. S., 182; 26 L. J., 
 Q. B. 25.) 
 
90 ESTOPPEL. 
 
 («■) Besseman v. Weight. [1858] 
 
 To an action by a patentee upon a licence for the use of his 
 patent, the licensee may not plead that the patent is void for want 
 of utility or novelty, the contract between them not being for the 
 exclusive use of the patent. Cumpton, J., said: "I had doubts 
 whether I was right at chambers when I refused leave to add this 
 plea, but now I am satisfied that I was right. In Chanter v. Leese 
 the bargain was for an exclusive right, which could not be given ; 
 but here the plaintiif only says, as against me you may use this 
 patent ; but he says nothing as against the rest of the world." 
 (6 W. B. 719.) 
 
 (j) Smith v. Scott. [1859] 
 
 To a declaration by a patentee against a licensee by deed, the 
 defendant is estopped to plead that the said invention was worth- 
 less and of no public utility, and was not new as to the public use 
 thereof in England, and that the plaintiif is not the first inventor ; 
 and that the defendant never got any benefit under the deed in 
 regard to the said invention, and, at the time of the making of the 
 deed the plaintiff knew the matters aforesaid and the defendant 
 did not, nor is the plea good as a plea of fraud. (6 G. B., N. S., 
 771 ; 5 Jur., N. S., 1366; 28.1,. /., G. P. 325.) 
 
 (i) Walton v. Lavatek. [1860] 
 
 Where, in an action for infringement, the plaintiff is the 
 assignee of a patent taken out by the defendant, the latter is 
 estopped from denying the novelty of the patent. (3 L. T., Bep., 
 N. S., 272.) 
 
 (Z) NoTON V. Bkooks. [1861] 
 
 If a patentee, in consideration of a royalty, grants to another a 
 licence to use the patent invention, and the latter uses it, he 
 cannot plead, as a defence to an action for the royalty, that the 
 invention was not new, or that the patentee was not the first 
 inventor. (7 E. & N. 499 ; 8 Jur., N. S., 155 ; 10 W. B. 111.) 
 
 (m) The Gkovee & Baker Sewing Machine Co. v. Millakd Ch. 
 [1862] 
 
 The fact of a patent having been found invalid at law, upon 
 proceedings betw een the patentee and third parties, is no answer 
 to a suit, based upon the same patent, for an injunction and 
 consequent relief against a licensee who has covenanted to pay 
 royalties, and is selling the invention, contrary to his covenant, 
 without payment of the royalties. (8 Jur., N. S., 714.) 
 
 (») Newall v. Elliott. [1863] 
 
 In an action for the infringement of a patent, the plaintiff, to a 
 plea that he was not the first and true inventor, replied, that on 
 another charge by the plaintiff against the defendant of infringe- 
 ment of the same patent, the question was referred to arbitration 
 by consent, and the arbitrator found that the letters patent were 
 
ESTOPPEL. 91 
 
 not. illegal and void: — Held, that the record did not show an 
 estoppel. (9 Jur., N. S., 359.) 
 
 (o) Ceossley v. Dixon. Oh. [1863] 
 
 While a person is using, under a licence, a patent machine and 
 paying a royalty for its use, or the use of its principle embodied 
 in any other machine, he cannot, in a proceeding against him for 
 non-paj'-ment of royalties in respect of the use of another machine 
 alleged to embody the principle of the patent invention, set up as 
 a defence that the patent is not valid. He can only be allowed to 
 contend that the second machine does not embody the principle of 
 the patent. (10 H. L. Gas. 293; 9 Jur., N.S., 607; 32 L. J. Ch. 
 617 ; 11 W. B. 716 ; 8 L. T. Sep., N. S., 260.) 
 
 (p) Trotman v. Wood. [1864] 
 
 One who makes a patent article under a licence from the 
 inventor, cannot, in an action against him for royalties, set up any 
 objection to the novelty or utility of the invention, or the validity 
 of the specification ; but, if the claim in the specification is 
 susceptible of two constructions, one of which would make the 
 specification bad, and the other and more natural one would make 
 it good, it is competent to him to insist that the latter is the true 
 construction. (16 C. B., N. S., 479.) 
 
 (g) Ohambers v. Ceichley. Oh. [1864] 
 
 Upon the dissolution of a partnership between the plaintiffs 
 and the defendant, the defendant assigned to the plaintiffs all his 
 interest in a patent which formed part of the assets : — Held, that 
 the defendant could not afterwards set up the invalidity of the 
 patent as against the plaintiffs. (33J5eau. 374.) 
 
 (r) Dangeefield v. Jones. Oh. [1865] 
 
 A licensee, on a bill for an injunction to restrain the infringe- 
 ment of a patent, may, after his licence has been determined, 
 dispute the validity of the patent. (13 L. T. Bep., N. S., 142.) 
 
 («) GoDCHEE V. Olayton. Oh. [1866] 
 
 Judgment was given by consent before declaration filed in 
 an action by a patentee against the members of a partnership 
 firm for an infringement, and the defendants immediately took a 
 licence to use the invention. A suit to restrain a subsequent 
 alleged infringement having been brought by the patentee 
 against the defendants at law and two fresh partners : — Held, 
 that the defendants in equity were not estopped by the judgment 
 at law from disputing the validity of the patent. (11 Jur., N. S., 
 107; 34 L. J., CJi. 239; 13 W. B. 336; 11 L. T. Bep., N. S., 732.) 
 
 (<) AxMANN V. Lund. Ch. [1874] 
 
 , The plaintiff and defendant had worked in partnership an 
 alleged patent, the property of the defendant : — -Held, that the 
 plaintiff by so doing had not debarred himself from disputing 
 
92 ESTOPPEL. 
 
 the patent after the termination of the partnership. {L. B. 18 
 Hq. 330 ; 22 W. B. 789.) 
 
 (m) Heugh v. Chamberlain. [1877] 
 
 The rule that an assignor of a patent is estopped from disputing 
 its validity, does not prevent his partner from raising that defence 
 in a separate statement of defence to an action for infringement. 
 (26 W. B. 742.) 
 
 (v) Ceopper ». Smith. H. ofL. [1885] 
 
 The defendant Hancock, who had taken out a patent for 
 improvements in lace machines, went into liquidation, and his 
 patent was assigned by his trustee to the plaintiff. Subsequently 
 Hancock took out another patent for impro-vements in lace 
 machines, and went into partnership with Smith, the defendant, 
 to work it. In an action for infringement, Hancock set up that 
 the first patent was invalid on the ground of (inter alia) want of 
 novelty: — Held, that he was not estopped from disputing the 
 validity of the patent, either by msitter of record, on the ground 
 that the letters patent were of record, or by deed, by reason of the 
 specification being by deed, or by matter in pais, on the ground of 
 the statements in his petition to the Crown, there being nothing to 
 show that the plaintiffs bought on the faith of those statements. 
 (26 Gh. D. 700 ; 10 App. G. 249.) 
 
 If a patentee becomes bankrupt and his trustee in bankruptcy 
 assigns the patent, the patentee is not estopped from afterwards 
 denying the validity of the patent as against the assignee. (10 
 App. C. 249.) 
 
 (w) Peoctor v. Bennis. C. A. [1887] 
 
 In an action for infringement by the plaintiff as patentee 
 against Bennis and other defendants, who had purchased the 
 machines alleged to be infringements from Bennis, it appeared 
 that before such purchases the plaintiff had gone to the other 
 defendants and asked them to try his machine, saying that they 
 w^ould find it better than Bennis's, without giving any intimation 
 that he considered Bennis's machine to be an infringement of his, 
 although he admitted that he considered it to be so, and intended 
 to take proceedings when he was in funds : — Held, that the 
 plaintiff had not by acquiescence or estoppel lost his right to 
 sue, it not being the duty of a patentee to warn persons that what 
 they are doing is an infringement, and plaintiff's conduct not 
 amounting to a representation that it was not an infringement. 
 (36 Gh. B. 740.) 
 
 {x) Edison & Swan Electeic Light Company v. Holland. C.A. 
 [1889] 
 
 Where a patent has already been before the Court, the former 
 decision, so far as it decides the construction of the patent (e.g., 
 that the invention claimed was a combination of any carbonised 
 filament, with any receiver of glass through which leading wires 
 
EXHIBITION. 93 
 
 pass and from which the air is exhausted), must be followed ; but 
 whether the claim is too wide or proper subject matter, and 
 whether the invention, is useful and novel, are questions depending 
 partly on fact, and must be decided de novo. (6 0. B. 243.) 
 
 {y) Thomson v. Mooee. [1889] 
 
 A defendant, who in an action for infringement has consented to 
 a perpetual injunction, restraining him from infringing and to pay 
 damages, is estopped from questioning either the validity of the 
 patent or the fact of the previous infringement. (6 0. B. 426.) 
 
 Svasion. See Infringement, Colourable Evasion, p. 183, seq. 
 Evidence. See Practice, Evidence, pp. 358 to 367. 
 
 Exclusive Licence. 
 
 immaterial in how many persons vested, p. 211 (f) 
 or what is the extent of, p. 211 (f). 
 
 Exclusive Licensee. 
 
 has a right to sue for infringements, p. 288 (w) 
 
 may use patentee's name to restrain infringement, p. 288 (w) 
 
 estoppel in actions by patentee against, pp. 90 (i), 211 (m). 
 
 Executor. 
 
 of assignee may petition for extension, p. 101 (k). 
 
 Exhibition. 
 
 Patents Act, 1883. Sect. 39. The exhibition of an invention at an industrial 
 or international exhibition, certified as such by the Board of Trade, or the 
 publication of any description of the invention during the period of the 
 holding of the exhibition, or the use of the invention for the purpose of the 
 exhibition in the place where the exhibition is held, or the use of the 
 invention during the period of the holding of the exhibition by any person 
 elsewhere, without the privity or consent of the inventor, shall not prejudice 
 the right of the inventor or his legal personal representative to apply for and 
 obtain provisional protection and a patent in respect of the invention or the 
 validity of any patent granted on the application, provided that both the 
 following conditions are complied with, namely, — 
 
 (a) The exhibitor must, before exhibiting the invention, give the 
 comptroller the prescribed notice of his intention to do so ; and 
 
 (5) The application for a patent must be made before or within six 
 months from the date of the opening of the exhibition. 
 
 Patents Act, 1886. Sect. 3. Whereas by section thirty-nine of the 
 Patents, Designs, and Trade Marks Act, 1883, as respects patents, and by 
 section fifty-seven of the same Act as respects designs, provision is made that 
 the exhibition of an invention or design at an industrial or international 
 exhibition, certified as such by the Board of Trade, shall not prejudice the 
 rights of the inventor or proprietor thereof, subject to the conditions therein 
 mentioned, one of which is that the exhibitor must, before exhibiting the 
 invention, design, or article, or publishing a description of the design, give the 
 Comptroller the prescribed notice of his intention to do so : 
 
 And whereas it is expedient to provide for the extension of the said sections 
 
94 EXISTING PATENTS. 
 
 to industrial and international exhibitions held out of the United Kingdonn, 
 be it therefore enacted as follows : 
 
 It shall be lawful for Her Majesty, by Order in Council, from time to time 
 to declare that sections thirty-nine and fifty-seven of the Patents, Designs, and 
 Trade Marks Act, 1883, or either of those sections, shall apply to any 
 exhibition mentioned in the Order in like manner as if it were an industrial 
 or international exhibition certified by the Board of Trade, and to provide 
 that the exhibitor shall be relieved from the conditions, specified in the said 
 sections, of giving notice to the comptroller of his intention to exhibit, and 
 shall be so relieved either absolutely or upon such terms and conditions as to 
 Her Majesty in Council may seem fit. 
 
 Patent Eules, 1890. 15. Any person desirous of exhibiting an 
 invention at an industrial or international exhibition, or of publishing any 
 description of the invention during the period of the holding of the exhibition, 
 or of using the invention for the purpose of the exhibition in the place where 
 the exhibition is held, shall, after the Board of Trade have issued a certificate 
 that the exhibition is an industrial or international one, give to the comp- 
 troller notice in writing of his intention to exhibit, pubhsh, or use the 
 invention, as the case may be. 
 
 For the purpose of identifying the invention in the event of an application 
 for a patent being subsequently made the applicant shall furnish to the 
 comptroller a brief description of his invention, accompanied, if necessary, by 
 drawings, and such other information as the comptroller may in each case 
 require. 
 
 Existing Patents. 
 
 Patents Act, 1883. Sect. 45. (1.) The provisions of this Act relating to 
 applications for patents and proceedings thereon shall have effect in respect 
 only of applications made after the commencement of this Act. 
 
 (2.) Every patent granted before the commencement of this Act, or on an 
 application then pending, shall remain unaffected by the provisions of this 
 Act relating to patents binding the Crown, and to compulsory licences. 
 
 (3.) In all other respects (including the amount and time of payment of 
 fees) this Act shall extend to all patents granted before the commencement of 
 this Act, or on applications then pending, in substitution for such enactments 
 as would have applied thereto if this Act had not been passed. 
 
 (4.) All instruments relating to patents granted before the commencement 
 of this Act required to be left or filed in the Great Seal Patent OfSoe shall be 
 deemed to be so left or filed if left or filed before or after the commencement 
 of this Act in the Patent Office. 
 
 Experiment, publication by. See under Novelty, pp. 261 to 265. 
 
 specification should be sufficient without. See under Specification, 
 p. 421, seq. 
 
 made to assist the Court, p. 95 (c) 
 
 user only by way of, is no infringement, pp. 94 (z), 95 (a), 157 (w), 160 (e). 
 (z) MuNTZ V. Foster. N.P. [1844] 
 
 Action for the infringement of a patent for " an improved 
 manufacture of metal plates for sheathing the bottom of ships." 
 The patentee described his invention as consisting in making 
 the said plates of an " alloy of foreign zinc," and of " best 
 selected copper;" the metals being melted together in certain 
 stated j)roportions. Tindal, C.J., told the jury that if the 
 
EXTENSION OF TEEM. 95 
 
 flofendant had " actually made any small experiment for the 
 jnirpose of ascertaining what the proportions or properties of 
 the different alloys would come to, that would scarcely have 
 been said to be a making in violation of the patent." (2 Web. 
 P. 0. 101.) 
 
 (a) Freaeson v. Loe. [1878] 
 
 If a man makes things merely by way of bond fide experiment, 
 and not with the intention of selling and making use of the thing 
 f-o made for the purpose for which a patent has been granted, but 
 with the view of improving upon the subject of the patent, or 
 with the view of seeing whether an improvement can be made or 
 not, that is not an invasion of the exclusive rights granted by the 
 patent. (L. B., 9 Ch. B. 66.) 
 
 (6) United Telephone Company v. Shaeples. [1885] 
 
 The defendant bought telephones abroad and imported them 
 for the purpose of allowing his pupils to experiment upon them, in 
 order to avoid using similar but more costly instruments which 
 had paid royalty : — Held, that this was a user for the purpose of 
 advantage, and was an infringement. (Griff, p. 232.) 
 
 (c) Badisuhe Anilin dnd Soda Fabeik v. Levinstein. [1883 to 1886] 
 An independent chemist was appointed by the Court to perform 
 the process as described in the specification, by way of experiment. 
 The chemist was to state the result, and in case of difficulty was 
 to receive instructions from the Judge personally. Each party to 
 be at liberty to name two chemists, of whom the Judge would 
 choose one on each side, to be present at the experiment. (W. N., 
 1883, 62.) 
 
 Explanation. See Amendment, pp. 23 (m), 24 (v). 
 
 Extension of Term. 
 
 Presentation of Petition, 
 
 Patents Act, 1883. Sect. 25, (1), p. 98 
 
 Rules in Patent Oases before the Judicial Committee, pp. 98, 99. 
 
 should have legal title, pp. 100 (d) (e), 101 (m) 
 must be strictly proved, pp. 100 {d), 101 (h) 
 may be administratrix of patentee, p. 100 (/) 
 
 assignee, pp. 100 (.9), 101 (i) (j), 102 (p), 103 («) (v) (tv) 
 
 executor of assignee, p. 101 (k) 
 
 importer of invention, p. 102 (p) 
 
 trustees of joint stock company, pp. 101 (m), 102 (p) 
 
 equitable assignee, p. 101 (ra) 
 
 company, pp. 102 (0) (r), 103 (m) 
 
 agent and trusfee for foreign inventor, p. 102 (s) 
 
 mortgagees and persons having lien on patent, p. 102 (t) 
 death of petitioner before hearing, p. 138 (/) 
 to revoke an order in council, p. 102 (q) 
 not affected by the Patents Act of 1883, as to rights accrued before the 
 
 Act, p. 104 (x) 
 mortgagee not being joined is not fatal, p. 104 (y) 
 
96 EXTENSIO]^ OF TEEM. 
 
 The Petition — 
 
 should state fully everything relating to patent, p. 104 (o) (J) (c) 
 omission to do so fatal, p. 104 (J) 
 
 amendment of, p. 104 (a) 
 
 objection to reception of, p. 107 (s). 
 Time to present Petition — 
 
 must not be too soon, p. 105 {d) 
 
 come to hearing before expiration of patent, p. 105 (e) {g) 
 
 Us pendens, p. 105 (/) 
 
 within week of last advertisement, p. 105 (A). 
 
 Jurisdiction of Judicial Committee of Privy Council, 
 
 to revoke an Order in Council, p. 105 (f) 
 
 exercise of, discretionary, pp. 106 (y), 115 (e) 
 
 exhausted when extension once granted, p. 106 (J) 
 
 nature of, generally, pp. 109 (6) (c) {d) («), 110 {g). 
 Advertisements — 
 
 should be where manufacture carried on, p. 106 (m) (k) 
 
 should contain the names of all the petitioners, p. 106 (o) 
 
 proved before case is beard, p. 106 (m). 
 Caveats — 
 
 Sect. 25, (2), p. 107 
 
 may be entered by any one, p. 107 (j) 
 
 must be in name of person opposing, p. 107 (j) 
 
 petition to enter, when not duly filed, p. 107 (|)) 
 
 licensee opposing need not prove his interest in patent, p. 107 (r) 
 
 person entering, entitled to notice of application, p. 107 (s). 
 Considerations for and against — 
 
 Sect. 25, (3) and (4), p. 107 
 
 generally, 
 
 case of hardship must be made out, p. 108 (<) 
 
 misfortunes of patentee, p. 108 (w) 
 
 patronizing inventor, pp. 103 (w), 108 (w) 
 
 opposition from existing interests, p. 108 (x) (z) 
 
 different from those necessary to obtain an Act of Parliament, p. 109 (c) (d) 
 
 loss from litigation, p. 110 (i) (j) 
 
 want of influence of patentee, p. Ill (Jc) 
 
 where there is no opposition, pp. 110 (g), 111 (m) 
 
 must be considered at date of petition, p. 115 (e) 
 
 crown not opposing, p. 113 {x). 
 Merit of Inventm — 
 
 loss from derangement of labour market, p. Ill (o) 
 
 where invention imported, pp. 113 (j/), 102 (p) 
 
 where improvement is small, p. 113 (y) (z) 
 
 originality of invention, pp. 113 (y), 114 (a) (d), 119 (y) 
 
 not affected by subsequent improvements, pp. 114 (a), 117 (?), 118 (o) 
 
 simplicity an element of value, p. 114 (a^) 
 
 in part only of patented invention, p. 114 (c) 
 
 must be special to obtain prolongation beyond seven years, p. 116 (ff). 
 Utility of invention — 
 
 non-user a presumption against, pp. 116 (h), 117 (Jc) (n), 118 (p) (r), 
 128 (m) 
 
 rebutted by pecuniary embarrassment of patentee, pp. 116 (/i)> 
 129 (?) 
 
 by nature of invention, pp. 117 (/), 118 (p) 
 by market being limited, p. 118 (t) 
 
 sale of patented article evidence of, p. 117 (i) 
 
EXTENSION OF TEEM. 97 
 
 Utility of Invention — (continued) 
 must be a prospect of future use of invention, p. 117 (m) 
 of part only, accounts niust deal with that part, p. 119 (a;) 
 Remuneration — 
 
 in estimating, deductions allowed for — 
 experiments, p. 120 (jj) (a) 
 litigation, pp. 120 (z) (a), 121 (e), 123 (p) (q) 
 bringing invention into use, pp. 121 (e), 123 (w), 126 (y) 
 cost of patent, p. 121 (e) 
 manufacturers profits, pp. 121 (e), 122 («), 123 (p) (qX 124 («), 
 
 125 (x) 
 costs of.agents, p. 124 (s) 
 no deduction for loss in sale and repurchase of patent, p. 125 (w) 
 actual expenses and receipts should be shown, p. 120 (c) 
 should be in proportion to benefit derived by public, p. 121 (/) 
 for whole, not ]3avt of patent, considered, p. 121 (g) 
 balance sheet handed to solicitor for treasury, p. 121 (jr) 
 ratio of increase, if considered, p. 121 (g) 
 want of evidence of, p. 121 (h) 
 
 realized abroad, pp. 122 (/), 124 (s), 125 (x), 126 (a) 
 evidence of petitioner, pp. 121 Qi), 123 (o) 
 
 accounts must be clear and precise, pp. 123 (p) (?) (r), 124 (t), 125 (u) 
 of patent and manufacture to be kept distinct, p. 123 (p) (g) (/•) 
 con.sidered before merits of invention, pp. 124 (t), 125 (u) (v) (w) 
 must be filed, p. 126 (z) 
 accounts of company who own the patent must be deposited, p. 127 (d). 
 Objections to — 
 where invention succeeds only on subsequent improveioents, p. 128 (i) (l}- 
 
 patent once extended, p. 129 (r) 
 public inconvenience, p. 132 (d) 
 invalidity, pp. 130 to 132 
 exclusive licence, p. 129 (js) 
 
 negligence in restraining infringement, p. 128 (,/) (m) 
 non-introduction of invention, pp. 128 (m), 129 (n) (cj) 
 improbability of future utility of invention, p. 128 (m) 
 an Act of Parliament rendering use of patented invention necessary, no 
 objection, p. 129 (o). 
 Questions of Validity — 
 
 not considered by committee, pp. 130 (u) 131 (w), (x) 132 {a) (b) 
 should be a prima facie case, pp. 130 (s) (t) («), 131 (z) 
 shown by judgment of House of Lords, p. 131 (z) 
 lis pendens involving, pp. 130 (t), 131 (y) 
 meaning of specification to be determined, pp. 132 (V) (d) 
 Cases as to inventions also patented abroad no longer needed, p. 133, 
 The Grant and Terms imposed — 
 sect. 25, (5), p. 133 
 
 extension is granted in form of a new patent, p. 135 (q) (r) 
 is good though made after expiration of patent, p, 133 (/) 
 subject to same objections as original patent, pp. 130 («), 131 (w), 
 
 133 (e), 135 (0 (m) 
 to combine substance of two patents, p. 134 (g) 
 to include improvements on patent extended, p. 134 (/i) 
 length of, where there are lis pendens, p. 134 (i) 
 in case of cognate patents, p. 135 (p) 
 where subsequent improvements patented, p. 134 (/) 
 confined to portion of original patent, pp. 114 (a), 134 (f) 
 is divisible, p. 135 (n) (o) 
 revocation of, p. 134 (7c) 
 
98 EXTENSION OP TEBM. 
 
 Conditions imposed — 
 
 to secure an annuity to inventor, pp. 136 (s) (f), 138 (c) (/) (g) 
 meaning of, p. 136 (t) 
 
 to secure a portion of profit to inventor, p. 137 (w) 
 
 to sell at fixed price, p. 137 (jw) 
 
 to protect apprentices, p. 136 (v) 
 
 to secure use of invention for public service, pp. 137 (x) (a), 138 (d) 
 
 to disclaim portions of patent, p. 137 (y) 
 
 not to sue for infringements, p. 137 (z) 
 
 to secure an existing interest in original patent, p. 137 (b) 
 
 to grant licences on certain terms, p. 138 (e). 
 Procedure — 
 
 Sect 25, (6), p. 139. 
 
 Sect. 25, (7), p. 140 
 
 given to successful opposer, p. 140 (cf) 
 
 but not if opposition needlessly prolongrd, pp. 141 {t) (x) («/) 
 
 when petition abandoned, pp. 140 (r), 141 (m) {v) {w) 
 
 to petitioner where there are no grounds to oppose, p. 141^ (s) 
 
 as gross sum, pp. 141 (w) (x), 142 (z) (a) (h) 
 
 to petitioner to revoke warrant to seal, p. 137 (z) 
 
 Presentation of Petition. 
 
 Patents Act, 1883, Sect. 25, (1) A patentee may, after advertising in 
 manner directed by any rules made under this Section his intention to do so, 
 present a petition to Her Majesty in Council, praying that his patent may be 
 extended for a further term ; but such petition must be presented at least 
 Bix months before the time limited for the expiration of the patent. 
 
 Sect. 25, (6). It shall be lawful for Her Majesty in Council to make, 
 from time to time, rules of procedure and practice for regulating proceedings 
 on such petitions, and subject thereto such proceedings shall be regulated 
 according to the existing procedure and practice in patent matters of the 
 Judicial Committee. 
 
 The following rules are still in force : — 
 Pules to he observed in Proceedings before the Bight Honourable the Lords 
 of the Judicial Committee of the Privy Council under the Act of the 5th 
 and Qth William IV., intituled " An Act to amend the Law touching 
 Letters Patent for Inventions," cap. 83. 
 
 Rule I. — A Party intending to apply by petition, under section 2 of the 
 said Act, shall give public notice by advertising in the London Gazette three 
 times, and in three London papers, and three times in some country paper 
 published in the town where or near to which he carries on any manufacture 
 ol anything made according to his specification, or near to or in which he 
 resides, in case he carries on no such manufacture, or published in the County 
 where he carries on such manufacture, or where he lives, in case there shall 
 not be any paper published in such town, that he intends to petition His 
 Majesty under the said section, and shall in such advertisements state the object 
 of such petition, and give notice of the day on which he intends to apply for 
 a time to be fixed for hearing the matter of his petition (which day shall not 
 be less than four weeks from the date of the publication of the last of the 
 advertisements to be inserted in the London Gazette), and that on or before 
 such day, notice must be given of any opposition intended to be made to the 
 petition ; and any person intending to oppose the said application shall lodge 
 notice to that effect at the Council Office, on or before such day so named in 
 the said advertisements, and having lodged such notice shall be entitled to have 
 from the petitioner four weeks' notice of the time appointed for the hearing. 
 
 Rule II. — A party intending to apply by petition, under section 4 of the 
 
EXTENSION OF TERM. <)9 
 
 said_ Act, shall in the advertisements directed to he puhlished by the said 
 section, give notice of the day on which he intends to apply for a time to he 
 fixed for hearing the matter of his petition (which day' shall not be less than 
 four weeks from the date of the publication of the last of the advertisements 
 to be inserted in the London Gazette), and that on or before such day caveatsi 
 must be entered ; and any person intending to enter a caveat shall enter the 
 same at the Council Office, on or before such day so named in the said 
 advertisements; and having entered such caveat, shall be entitled to have 
 from the petilioner four weeks' notice of the time appointed for the hearing. 
 
 Eule III. — Petitions under sections 2 and 4 of the said Act must be 
 presented within one week from the insertion of the last of the advertisements 
 required to be puhlished in the London Gazette. 
 
 Kule IV. — All petitions must be accompanied with affidavits of advertise- 
 ments having been inserted according to the provisions of section 4 of the said 
 Act and the 1st and 2nd of these Rules and the matters in such affidavits 
 may be disputed by the parties opposing upon the hearing of the Petitions. 
 
 Rule V. — All persons entering caveats under sect. 4 of the said Act, and all 
 parties to any former suit or action touching letters patent, in respect of 
 which petitions shall have been presented under sect. 2 of the said Act, and 
 all persons lodgins notices of opposition under the 1st of these Rules, shall 
 respectively beintitled to be served with copies of petitions presented under the 
 said sections, and no application to fix a time for hearing shall be made 
 w ithout affidavit of such service. 
 
 Rule VI. — All parties served with petitions shall lodge at the Council 
 Office, within a fortnight after such service, notice of the grounds of their 
 objections to the granting of the prayers of such petitions. 
 
 Rule VII. — Parlies may have copies of all papers lodged in respect of any 
 application under the said Act, at their own expense. 
 
 Rule VIII. — The registrar of the Privy Council, or other officer to whom 
 it may be referred to tax the costs incurred in the matter of any petition 
 presented under the said Act, shall allow or disallow in his discretion all 
 payments made to persons of science or skill examined as witnesses to matters 
 of opinion chiefly. 
 
 Rule IX. — A party applying for an extension of a patent, under sect. 4 of 
 the said Act, must lodge at the Council Office six printed copies of the 
 specification, and also four copies of the balance sheet of expenditure and 
 receipts relating to the patent in question, which accounts are to he proved on 
 oath before the Lords of the committee at the hearing. In the event of the 
 applicant's specification not having been printed, and if the expense of making 
 six copies of any drawing therein contained or referred to would be consider- 
 able, the lodiing of two copies only of such specification and drawing will be 
 deemed sufficient. 
 
 All copies mentioned jn this rule must be lodged not less than one week 
 before the day fixed for hearing the application. 
 
 The Judicial Committee will hear the Attorney-General, or other counsel, 
 on behalf of the (yrowp, against granting any application made under either 
 the 2nd or 4th sect, of the said Act, in case it shall be thought fit to oppose 
 the same on such behalf. 
 
 5 & 6 Will. IV., ch. 83, is repealed by the Patents Act, 1883, Sect. 113. 
 Sect. 2, referred to in Rule 1, related to the mode of proceeding where the 
 patentee was proved not to be the real inventor though he believed himself to 
 be so ; this section has not been replaced by any enactment giving a similar 
 power of confirmation, and is therefore omitted. 
 
 Sect. 4 is inserted for the purpose of explaining the rules only and is as 
 follows : — • 
 
 If any Person who now hath or shall hereafter obtain any Letters Patent as 
 aforesaid shall advertise in the London Gazette Three Times, and in Three 
 
 H 2 
 
100 EXTENSION OF TEEM: 
 
 London Papers, and three times in some Country Paper published in the town, 
 where or near- to which he carried on any manufacture of anything made aceurd- 
 ing to his Specification, or near to or in which he resides in case he nirried 
 dn no such Manufacture or pubh'shed in the County where he carries on 
 such Manufacture or where he lives in case there shall not be any paper published 
 in such Town, that he intends to apply to Hie Majesty in Council for a Prolonga- 
 tion of his Term of sole using and vending his Invention, and shall petition His 
 Majesty in Council to that Effect, it shall be lawful for any person to enter a 
 Caveat at the Council Office ; and if His Majesty shall refer the consideration of 
 such Petition to the Judicial Committee of the Privy Council, and notice shall 
 first be by him given to any Person or Persons who shall have entered such 
 Caveats, the Petitioner shall be heard by his Counsel and Witnesses to prove his 
 Case, and the Persons entering Caveats shall likewise be heard by their Counsel 
 and Witnesses ; whereupon, and upon hearing and inquiring of the whole Matter, 
 the Judicial Committee may report to His Majesty that a further Extension of 
 the Term in the said Letters Patent should be granted not exceeding Seven 
 Years ; and His Majesty is hereby authorised and empowered, if He shall think 
 fit, to grant new Letters Patent for the said Invention for a Term not exceeding 
 Seven Years after the expiration of the first Term, any Law, Custom, or Usage 
 to the contrary in anywise notwithstanding : Provided that no such Extension 
 shall be granted if the Application by Petition shall not be made and prosecuted 
 with Effect before the Expiration of the Term originally granted in such Letters 
 Patent. 
 
 The last proviso was repealed by 2 & 3 Vio. oh. 67, and the remainder of the 
 section was repealed as mentioned above. 
 
 The Petitioner. 
 
 (d) In re Weight's Patent, Ex parte Shuttlbwoeth. [1837] 
 Extension recommended in favour of the parties having the 
 
 legal estate, withont imposing any conditions with reference to 
 the equitable claim of other parties connected with the patentee. 
 (1 Weh. P. C. 661.) 
 
 In an application for extension by an assignee, the title of the 
 petitioner must be strictly proved, although no notice of intention 
 to dispute the title is contained in the objections. (76.) 
 
 (e) In re Southwoeth's Patent. [1837] 
 
 The new letters patent must be granted to the party in whom 
 the subsisting patent is legally vested. (1 Web. P. C. 487.) 
 
 (/) In re Downton's Patent. [1839] In re Heath's Patent. 
 [1868] 
 
 An extension of a patent may be granted to the administratrix 
 of the patentee. (1 Weh. P. G. 665 ; 8 Moo. P. C. C. 217.) 
 
 (g') Ira re Moeoan's Patent. [1843] 
 
 Lord Brougham, in delivering judgment, said: "When ap- 
 plications are made to their Lordships for the extension of a 
 patent term, that is to say, of a monopoly, under letters patent by 
 assignees, to whom the interest of the patentee has been parted 
 witb, and in whom it is vested, their Lordships have always been 
 used to consider, that by taking into their view and favourably 
 listening to the application of the assignee, they are, though not, 
 directly, yet mediately and consequentially, as it were, giving a 
 benefit to the inventor, because, if the assignee is not remunerated 
 
The I'ditioiu-y. inl 
 
 at all, it might be said that the chance of the patentee If initKiug 
 an advantageous conveyance to the assignee would be nW^JWJ^ 
 diminished, and consequently, his interest damniiioil. F^*llife! 
 reason, consideration has been given to the claims of the assignc~o 
 who has an interest in the patent." (1 Weh. P. G. 737.) 
 
 Qi) In re Galloway's Patent. [1843] 
 
 In an application by an assignee, his title must be strictly 
 proved. (1 Weh. P. 0. 72.:..) 
 
 (/) EussELL ('. Ledsam. [1845] 
 
 The power of the Crown to extend letters patent is not confiued 
 to (jraiitees, but extends to assignees, and such renewed letters 
 patent, granted to the assi<ince, are ij;o(id by the statute 5 & G 
 Will. 4, c. 83, independently of the 7 & 8 Vict. c. 69. (14 M d; W. 
 574; judgment aftirmed in Esch. Ch., IG ill & W. 633; and in 
 H. of'L., 1 E. L. Cas. 687.) 
 
 (j) In re Hardy's Patent. [1849] ' 
 
 Extension of a patent gianted to an assignee upon certain 
 conditions. (See p. 137 (w).) (6 Moo. P. G. G. 441 ; 13 Jar. 177.) 
 
 (k) In re Bodmee's Patent. [1849] 
 
 The extension of a patent may be granted, on petition, to the 
 executor of the surviving assignee for valuable consideration of a 
 patentee. (6 3Ioo. P. G. G. 469.) 
 
 (l) In re Behry's Patent. [185(J] 
 
 Extension of letters patent granted for six years, where the 
 invention was of considerable commercial value, and the importers 
 had embarked a large capital upon machinery in trying to 
 introduce it to general use, and incurred considerable loss in so 
 doin,-. (7 Moo.' P. G. G. 187.) 
 
 Tl:ie importer of an invention by the outlay of his capital 
 benefits the public in the proportion of the vahie of the invention 
 imjiorted, and importation, therefore, is to be considered as a solid 
 claim to the exeicise of the power of extension. (Ih. 189.) 
 
 (m) In re Pettit Smith's Patent. [1850] 
 
 The person who has the legal estate in letters patent has the 
 prior right to petition for an extension. In the present case the 
 new letters patent were granted to the trustees of a joint-stock 
 company, although the patentee joined in the petition. (7 Moo. 
 P. G. G. 133.) 
 
 (n) In re Noble's Patent. [1850] 
 
 An equitable assignee is entitled to appear with the legal 
 assignees of a patent, on a petition for a prolongation of the letters 
 patent, if the name of such equitable assignee appears, with the 
 other petitioners, in the advertisements required bjr sect. 4 of the 
 statute 5 & 6 Will. 4, c. 83, and Enle 2, made in pursuance thereof. 
 (7 Moo. P. G. G. 191.) 
 
102 EXTENSION OP TERM : 
 
 (o) In re Cook & Wheatstone's Patent. [1851] 
 
 Semhle, a company may obtain a renewal of letters patent. 
 Extension was in this case refused on the grounds of sufficient 
 remnneration ; Lord Langdale, however, said: "If the company's 
 speculation had been clearly made out to be a losing concern, it 
 would perhaps have been matter for consideration whether there 
 was not good ground for renewal." (38 Lond. Jour. 223.) See 
 Deacon's Patent, p. 127 (g). 
 
 (p) In re Claridge's Patent. [1861] 
 
 The importer of an invention from abroad is an inventor 
 within the meaning of the statute 6 & 6 Will. 4, c. 83, and 
 entitled to apply for an extension of the term. But the Judicial 
 Committee will look with jealousy into the merits of the invention 
 imported. 
 
 Application for an extension by the trustees of a joint-stock 
 company (the assignees of the patentee) refused ; the invention 
 imported having been in common use in France, and no great 
 risk or expenditure incurred by the patentee or his assignees in 
 introducing it to the public. (7 Moo. P. G. G. 394.) 
 
 Jervis, 0. J., objected to the prolongation on the ground 
 that the rule in granting letters patent is to limit the number 
 of grantees to twelve. (2^.395.) 
 
 (5) In re Schlumbergee's Patent. [1863] 
 
 An alien, resident abroad, who was interested in an English 
 patent bj' a foreign inventor, and who had also considerable 
 dealings in this country in respect of sales of the patented machine 
 and in granting licenses for the use of such patent, held, in the 
 circumstances, to have such a locus standi as to entitle him to 
 petition the Crown to revoke an order in council for granting an 
 extended term of an English patent, and to recall the warrant for 
 sealing such patent. (9 Moo. P. G. G. 1.) 
 
 (r) In re Kapier's Patent. [1861] 
 
 The Judicial Committee had power, under statute 7 &, 8 
 Vict. c. 69, s. 4, to grant an extension of the term of letters 
 patent to the assignee of the patentee (in this case a public 
 company), when the patentee has ceased to have any connection 
 with the working of the patent. (13 Moo. P. G. G. 643 ; 9 W. JJ. 
 390.) 
 
 (g) In re Newton's Patent. [1861] 
 
 Extension granted to a petitioner who had obtained the letters 
 patent as agent and trustee for a foreign invention. (14 Moo. 
 P. G. G. 166.) 
 
 (£) In re Bovill's Patent. [1863] 
 
 The patentee had been involved in debt arising from extensive 
 litigation in defending his patent rights, and had, moreover, 
 
The Petitioner. 103 
 
 mortgaged his letters patent, and entered into a deed of arrange- 
 ment or inspectorsMp under the Bankruptcy Act with his 
 creditors. The petition was presented hy the patentee, and 
 certain mortgagees and others claiming liens on the letters 
 patent. In the circumstances, their Lordships granted the ex- 
 tension of the , patent to the patentee alone. (1 Moo. P. G. C, 
 N. S., 348.) 
 
 (u) In re Norton's Patent. [1863] 
 
 Petition by assignee of patentee, who was dead, for prolongation 
 of letters patent, dismissed by reason, (1) that the assignee had 
 never taken any effectual steps to apply the invention to a useful 
 and beneficial purpose; and (2) as the application for extension, 
 though by the assignee, was in reality on behalf of a joint-stock 
 company, who purchased the letters patent for the purpose of 
 trading with it, and with others founded upon it, and not for any 
 purpose by means of which any benefit can be derived by the 
 original inventor. (1 Moo. P. C. G., N. S., 3;i9.) 
 
 The Master of the EoUs, in delivering judgment, said : " Under 
 the late statute, 7 & 8 Vict. c. 69, s. 4, a person is not excluded 
 fi'om applying for an extension of a patent upon the groimd of 
 his being the assignee of the patent ; but it must always be 
 borne in mind that the assignee of a patent does not, unless under 
 peculiar circumstances, apply on the same favourable footing that 
 the original inventor does. The ground that the merits of the 
 inventor ought to be properly rewarded, in dealing with an 
 invention which has proved useful and beneficial to the public, 
 does not exist in the case of an assignee, unless the assignee be a 
 person who has assisted the patentee with funds to enable him to 
 perfect and bring out his invention, and has thus enabled him 
 to bring it into use." (lb. 344.) 
 
 (w) In re Normand's Patent. [1870] 
 
 An assignee of the patentee, who had taken an assignment of 
 four-fifths of the patent within a few months of the expiration 
 of a patent, which had only just been brought into use, for a 
 small consideration, was not entitled to any extension. (6 Moo. 
 P. C. G., N. S., 477.) 
 
 (w) In re Pitman's Patent. [1871] 
 
 Sir J. W. Colvile, in delivering judgment, said : " There are, 
 no doubt, cases in which their Lordships have granted applica- 
 tions by the assignees of the patentee for extension of the term, 
 and have also considered, in some respects, the expenses incurred 
 by the assignee in bringing the patent into notice, and for the 
 merit, as it may be said, of the assignee in patronizing the 
 patentee, and in pushing the patent into notice ; but the general 
 rule which their Lordships entertain in applications on the part 
 of assignees, is, as was stated by Lord Brougham in Morgan's 
 Pat-nt." (8 Moo. P. G. G., N. S., 297.) 
 
104 EXTENSION OF TEEM: 
 
 (x) In re Brandon's Patent. [1884] 
 
 The provisions of the Patents Act of 1883 do not affect any patent 
 granted before the commencement of the Act, nor any right or 
 privilege which had accrued to the patentee before or at the com- 
 mencement of the Act, including the privilege of applying for 
 a renewal. (9 App. 0. 589 ; 63 L. J. P. 0. 84; 1 0. B. 154; Griff. 
 255.) 
 
 (y) Church's Patent. [1886] 
 
 Objection being taken that the mortgagee of the patent was 
 not a petitioner : — Seld, that the mortgagee as legal owner ought 
 to have been a party, but that the irregularity was not so serious 
 as to be fatal at the further hearing, since if it had been discovered 
 before the hearing it might have been set right. (Griff. 266; 
 3 0. B. 96.) 
 
 (z) Willacy's Patent. [1888] 
 
 The petition having been presented by the son of the patentee 
 who had acquired an interest in the patent from L. who had 
 worked the patent under a verbal agreement with the patentee 
 up to his death : — Held, that the personal representative of the 
 patentee and L. ought to be made parties. (6 0. B. 690.) 
 
 The Petition. 
 
 (a) In re Hutchinson's Patent. [1861] 
 
 Material facts, showing the title of the petitioner, were disclosed 
 in evidence, which were omitted to be stated in the petition for 
 prolongation. In such circumstances the hearing was postponed, 
 and the petition directed to be amended by stating those facts. 
 (14 Moo. P. G. 0. 364.) 
 
 (6) In re Pitman's Patent. [1871] 
 
 As the recommendation to the Crown for the prolongation of 
 the term of letters patent is a matter of discretion in the Judicial 
 Committee, it is imperatively necessary that the petition for such 
 prolongation should state fairly and fully everything relating to 
 the patent : an omission to do so is fatal to the application. 
 
 Where the petition omitted to state that the patent was, in 
 fact, a communication from a foreigner living abroad, who had 
 previously to the English patent patented the same invention 
 in America, and that the American patent had expired, though 
 afterwards lenewed in America, the Judicial Committee, in the 
 circumstances, refused the application. (8 Moo. P. C. C, N. S., 
 393.) 
 
 (c) I» re Johnson's Patent. [1871] 
 
 A clear statement should be made, in the petition, of every 
 matter applicable to the patent, the term of which it is desired 
 should be extended. (L. B., 4 P. C. 83.) 
 
The Petition. 105 
 
 Time to present Petition. 
 
 (d) In re Mackintosh's Patent. [1836] 
 
 A petition was lodged in January, 1836, for the prolongation 
 of a patent which expired in Jnne, 1837. Application postponed 
 on the ground that the profits accruing in the meantime might 
 materially affect the question of extension. (1 Web. P. G. 739.) 
 
 (e) In re Bodmee's Patent. [1838—1840] 
 
 The original petition was dismissed, because it had not been 
 prosecuted in time according to 5 & 6 Will. 4, o. 83, sect. 4 ; but 
 the 5 & 6 Will. 4, c. 83, sect. 4, having been amended by the 
 2 & 3 Vict. sect. 67, their Lordships, upon a fresh petition, 
 granted an extension of the letters patent tor seven years, under 
 that Act, on the ground that the invention was an ingenious one, 
 and. that it did not appear that the patentee had received any 
 remuneration until within the three years previous to the ex- 
 piration of the patent. (2 Moo. P. 0. C. 471 ; 1 Web. P. G. 740.) 
 
 (/) In re Kay's Patent. [1839] 
 
 Letters patent being about to expire, an application for an 
 extension will be heard during the pendency of legal proceedings 
 as to the validity of the patent. (3 Moo. P. G. G. 24.) 
 
 (g) Ledsham v. Eussell. [1848] (H. L.) 
 
 An application for prolongation was " prosecuted with effect " 
 within the terms of the statute if the applicant obtained the report 
 of the Judicial Committee before the original patent expired. 
 (1 H. L. G: 687.) 
 
 (K) In re Hutchinson's Patent. [1861] 
 
 Eule 3 of the Privy Council, made .pursuant to the statute, 
 5 & 6 Will. 4, c. 83, relating to letters patent for inventions, 
 provides that a petition under sections 2 and 4 of that statute^ 
 must be presented within one week from the insertion of the last 
 of the advertisements required to be published, in the London 
 Gazette. 
 
 A petitioner inserted the last advertisement of his intention 
 to petition for a prolongation on the 24th of May, but did not 
 present his petition until the 5th of June following. The registrar 
 refused to receive the petition as being too late. Upon a special 
 application for that purpose, it appearing that the delay arose 
 from a mistake of the petitioner's agent, an order was made 
 admitting the petition. (14 Moo. P. G. G. 364.) 
 
 Jurisdiction of the Judicial Gommittee of the Privy Gouncil. 
 
 (i) In re Schlumbeegee's Patent. [1853] 
 
 The Judicial Committee had, under the 4th sect, of 3 & 4 
 .Will. 4, c. 41 , jurisdiction to entertain a petition, referred to them 
 by the Crown, seeking to revoke an order in council, made upon 
 
106 EXTENSION OE TEEM: 
 
 their recommendation, upon an application by patentees fur an 
 extension of letters patent nnder the statute 5 & 6 Will. 4, c. 83, 
 and to recall the warrant for sealing such letters patent. (9 Moo, 
 
 P. a a 1.) 
 
 (J) In re Honiball's Patent. [1856] 
 
 The authority conferred upon the Crown, by 5 & 6 Will. 4, 
 c. 83, R. 2, to confirm letters patent, was discretionary in the 
 Judicial Committee, to recommend or not a confirmation. (9 Moo. 
 P. a G. 378.) 
 
 (F) In re Bett's Patent. [1862] 
 
 When a foreign and an English patent had been obtained for 
 the same invention, and the foreign patent expired first, the 
 Judicial Committee of the Privy Council had no jurisdiction to 
 entertain an application of prolongation. See sect. 25 of 15 & 16 
 Yict. c. 83. (1 Moo. P. a a, N. S., 49 ; 9 Jur., N. S., 137 ; 61 
 W. B. 221 ; 1 L. T. Bep., N. S., 577.) (15 & 16 Vict. ch. 33, 
 sect. 25 is now repealed hy 46 & 47 Vict., ch. 57, gect. 113.) 
 
 (J) In re Goucher's Patent. [1865] 
 
 The power given to the Judicial Committee by statute 7 & 8 
 Vict. c. 69, s. 2 (enlarging statute 5 & 6 Will. 4, c. 8.3, s. 4), to 
 recommend an extension of the term of letters patent for an inven- 
 tion, is exhausted, when an extension has been once recommended 
 and new letters patent granted ; and the Judicial Committee have 
 no jurisdiction to entertain a petition for a further prolongation of 
 the new letters patent. (2 Moo. P. G. G., N. S., 532.) 
 
 Advertisements. 
 
 (m) In re Derosne's Patent. [1844] 
 
 When the patentee resides abroad, and the invention is carried 
 on under licensees, the advertisements should be inserted in papers 
 circulating in the places where the manufacture is actually carried 
 on. (2 Web. P.G.2; 4 Moo. P. G. G. 416.) 
 
 (n) In re Perkin's Patent. [1845] 
 
 The advertisements should be proved before the case is heard. 
 The advertisements having been inserted in London papers only, 
 a witness was allowed to be called to prove that the patent 
 apparatus was manufactured in London and not elsewhere. 
 (2 Weh. P. G. 8.) 
 
 (o) In re Noble's Patent. [1850] 
 
 To entitle an equitable assignee to appear with the legal 
 assignee of a patent on a petition for a prolongation of the letters 
 patent, the name of such equitable assignee must appear, with the 
 other petitioner, in advertisements required by sect. 4 of the 
 statute 5 & 6 Will. 4, c. 83, and Kule 2, made in pursuance thereof. 
 (7 Moo. P. G. G. 191.) 
 
Grounds of Extension. 107 
 
 Per Lord Brougham : If the statute requires anything to be 
 done which is not done, the Crown has no power to grant a 
 prolongation. (lb. 194.) 
 
 Caveats. 
 
 Pate>;ts Act, 1883, s. 25. (2). Any person may enter a caveat, addressed 
 to the Rfgislrar of the Council at the Council Oifice, against the exteni>ion. 
 
 (p) Iw re Smith's Patent. [1850] 
 
 An application by the Lords of the Admiralty to enter a caveat 
 and be heard against a petition for extension, such caveat not 
 having been filed in proper time, refused ; as the Attorney-General 
 watches the interests of the government. (7 Moo. P. G. G. 133.) 
 
 (g) In re Lowe's Patent. [1852] 
 
 The Judicial Committee will not permit a party to be heard in 
 opposition to an application for a prolongation of the term of 
 letters patent, unless a caveat has been entered in his own name. 
 Where a patent agent had entered a caveat in his own name, but 
 in reality as the agent of several other persons as well as on his 
 own behalf, it was held that his counsel could only be heard for 
 him, and could only ask such questions as respected his interest. 
 Anj' one of the public has a right to enter a caveat and be heard 
 in opposition at the hearing. (8 Moo. P. G. G. 1.) 
 
 (r) In re Schlumberger's Patent. [1853] 
 
 An alien, residing abroad, who presents a petition to oppose 
 the extension of a patent under which he, as a licensee, had had 
 considerable dealings in this country, need not prove in a formal 
 manner what his interest in the letters patent is. Whether an 
 alien, living abroad, has a right, as such, to inform the Crown, 
 by petition, as to any matters touching letters patent, quaere. 
 (2 Eq. B. 1.) 
 
 (s) Jw re Hutchinson's Patent. [1861] 
 
 Where the Judicial Committee made an order to receive a 
 petition which had not been presented in accordance with Eule 3 
 of the Privy Council, made pursuant to the statute 5 & 6 Will. 4, 
 c. 83, and a caveat had been entered : — Held, that as the party 
 filing the caveat was interested in sustaining the objection to the 
 reception of the petition, notice of the application must be served 
 on him. (14 Moo. P. G. G. 364.) 
 
 Considerations for and against. 
 
 Patents Act, 1883, sect. 25. (3.) If Her Majesty shall be pleased to refer 
 any such petition to the Judicial Committee of the Privy Council, the said 
 Committee shall proceed to consider the same, and the petitioner and any 
 person who has entered a caveat shall be entitled to be heard by himself or by 
 counsel on the petition. 
 
 "(4.) The Judicial Committee shall, in considering their decision, have 
 
108 EXTENSION OE TEEM : 
 
 regard to tlie nature and merits of the invention in relation to the public, to 
 the profits made by the patentee as such, and to all the circumstances of the 
 case. 
 
 Grounds of Hxtension generally. 
 
 (t) In re Erard's Patent. [1836] 
 
 Lord Lyndhurst : " In oases of this kind (extension) we expect 
 a very strong case of hardship to be made out, as well as a strong 
 case upon the utility of the invention." (1 Weh. P. G. 559 ; 6 Bep. 
 Art., N. S., 58.) 
 
 (m) In re Swaine's Patent. [1837] 
 
 The invention being very meritorious, the result of a great deal 
 of labour, care and science, and extremely useful in its effects, 
 and the party having sustained considerable loss, the patent was 
 extended. (1 Web. P. G. 569.) 
 
 (v) In re Southwoeth's Patent. [1837] 
 
 The misfortunes of the patentee and those connected with him 
 in the management of the patent, together with the nature of the 
 invention being such that it would not be likely to come into 
 immediate use, are grounds for an extension of the term for the 
 patent. (1 Weh. P. C. 486.) 
 
 (w) In re Whitehouse's Patent. [1838] 
 
 The term of letters patent for improvements in manufacturing 
 gas tubes, extended by the Judicial Committee, under the 
 6 & 6 Will. 4, c. 83, for six years, on the ground of the great merit 
 and utility of the invention, the meiit of the petitioner in patroni- 
 sing an ingenious inventor, and liberally expending money to 
 introduce the invention (the amount of profit not being greater 
 than the ordinary profit on capital employed on similar trades), 
 and the annoyance, anxiety, and cost of litigation. (2 Moo. 
 P. G. G. 496 ; 1 Weh. P. G. 473.) 
 
 (a;) In re Stafford's Patent. [1838] 
 
 Extension of term recommended, the patentee having experienced 
 great opposition from the existing interests, and being a loser by 
 the invention. (1 Weh. P. G. 563.) 
 
 (jf) In re Kollman's Patent. [1839] 
 
 The invention being meritorious, but from circumstances beyond 
 the control of the patentee, not sufSciently appreciated, and unpro- 
 ductive of reward, an extension recommended. (1 Weh. P. G. 
 564.) 
 
 (z) In re Egbert's Patent. [1839] 
 
 The violent resistance and opposition to the introduction of a 
 meritorious invention, which has prevented the patentee from 
 realizing a profit, is a ground for the extension of the terms of 
 letters patent. (1 Weh. P. G. 573.) 
 
Grounds of Extension. 109 
 
 (a) In re Downton's Patent. [1839] 
 
 '' The questions are, is it a useful invention ? is it beneficial to 
 the public ? is it an invention of that character which would lead 
 us to interpose ? is there ingenuity in the invention, and has the 
 party been remunerated?" (1 Web. P. G. 567.) 
 
 (6) In re Jones' Patent. [1840] 
 
 Lord Brougham : " It is perfectly true, as has been stated, not 
 only upon this but upon former occasions, that these applications 
 are anything rather than matters of course. This is a very extra- 
 ordinary jurisdiction which has been conferred on the Judicial 
 Committee by the legislature, and it is to be exercised only on the 
 raoNt special grounds alleged and proved in reference to each case." 
 (1 Web. P. G. 579.) 
 
 (c) In re Morgan's Patent. [1843] 
 
 Lord Brougham, in delivering judgment, said : " It is by no 
 means the course of their lordships to put themselves precisely in 
 the situation of the legislature, and never to grant an extension 
 in a case where an Act of Parliament would not have been obtained. 
 At the same time there are some limits to this. They are to look 
 to a certain degree at the position in which they are placed, and to 
 consider that they here represent, the legislature, and that they 
 are invested with somewhat similar powers of discretion to those 
 exercised formerly by the whole three branches of Parliament." 
 (1 Web. P. G. 739.) 
 
 (d) In re Soames' Patent. [1843] 
 
 Lord Brouo;ham, in delivering judgment, said : " If this case were 
 to be disposed of upon the ground which in arguing such cases has 
 sometimes been assumed to be the fit one, that there must not only 
 be merit and benefit to the puV)lic, and (which is essential) a want 
 of sufficient remuneration in the course of using the patent, but 
 that, moreover, the case is to be tried here as on a Bill in Parliament 
 introduced to prolong the patent ; then, I apprehend, there can 
 really be no doubt whatever tliat in this case no Bill would ever 
 have passed through the two Houses of Parliament ; but their 
 lordships have always considered that it was with the view of 
 affording a better remedy, not only cheaper and easier, but better 
 in this respect, that there might be cases which never would have 
 prevailed on the legislature to make a new personal law prolonging 
 a monopoly, which, nevertheless, might seem meritorious enough 
 in respect of the individual, beneficial enough in respect of the 
 public, and deficient enough in remuneration to justify inter- 
 ference, which, nevertheless, had they been presented in the form 
 of a petition to Parliament, would have failed to procure an act." 
 The patent was extended for three years. (1 Web. P. C. 733.) 
 
 (e) Weight's Patent. [1843] 
 
 Extension for seven years granted of a patent for manufacturing 
 
110 EXTENSION OF TEEM : 
 
 ornamental tiles, regard being had to the benefit the public were 
 likely to receive, and to the fact that the tiles were being usedfor 
 the flooring of the Temple Church, and that this was the first time 
 the invention had come into notice. (1 Web. P. 0. 736.) 
 
 (/) DEROsifE's Patent. [1844] 
 
 It is anything rather than a matter of course to grant an exten- 
 sion, under the powers of the Act, of these patent rights ; the 
 parties must show, in the first place, some invent iin ; in the next 
 place, a benefit to the public ; and in the third place, that they 
 have not had an adequate remuneration." (2 Web. P. C.i; 4 Moo. 
 P. G. a 418.) 
 
 (gr) In re Perkin's Case. [1845] 
 
 Lord Brougham, in delivering jurlgment, said: "It is by no 
 means a matter of course that an application of this sort, even when 
 it is not opposed, should be granted. We are here by the authority 
 of the legislature, given to us to advise the Queen, to protect her 
 from rashly and inexpediently for the public granting an extension, 
 which formerly used to require a solemn and deliberate act of all 
 the three branches of the legislature, involving a double inquiry, 
 together with an opinion of the Government itself. Now, it 
 beoonfies our duty to examine minutely, and very often to examine 
 minutely, where there is no party to oppose except the Crown 
 counsel, before we report or advise for any certain period of exten- 
 sion, or for any extension at all." (2 Web. P. C. 18.) 
 
 (h) In re Pinkus' Patent. [1848] 
 
 Lord Langdale, M.E. : " What is usually taken into consideration 
 as forming the ground of the species of indulgence here asked for 
 is, first, the merit of the invention ; secondly, the utility of the 
 machinery which has been invented ; and, lastly, the question has 
 been raised, whether the patentee, who has enjoyed the benefit of 
 the patent, has received a sufScient lemuneration for the merit 
 which he has displayed." ( 1 2 Jur. 234.) 
 
 (i) In re Pettit Smith's Patent. [1850] 
 
 Extension of letters patent granted for five years ; the invention 
 being of great merit and public utility, but the patentee and his 
 grantees having received no remuneration, in consequence of the 
 originality of the patent being disputed at law. (7 Moo. P. G. G. 
 133.) 
 
 (j) In re Heath's Patent. [1853] 
 
 Term of letters patent extended for seven years, on the ground 
 of the meritorious nature of the invention, and the extensive liti- 
 gation the patentee had been put to in protecting his patent rights, 
 which had prevented any remuneration. (8 Moo. P. G. G. 217 ; 
 2 Web. B. 247.) 
 
Grounds of Extension. Ill 
 
 (/c) In re Payne's Patent. [1854] 
 
 Patent for preserved meats extended for five years, on the 
 grounds that the patentee had used every exertion in his power to 
 introduce the invention, and had expended large sums in so doing ; 
 but, by reason of the distrust with which the public viewed prepa- 
 tions of that nature, the inadequacy of the patentee's means, and 
 his want of influence with public boards, he had been prevented 
 from obtaining such a fair trial as would lead to the adoption by 
 the public of his invention. (Git. Coryton's Laws of Letters Patent, 
 p. 220.) 
 
 (J) In re Honiball's Patent. [1855] 
 
 The Eight Hon. Pemberton Leigh : " It has been again and again 
 stated in this place that the gi'ant of an extended term is anything 
 but a matter of course ; that, in order to obtain it, a very special 
 case must be made ; that the novelty, merit, and utility of the 
 invention must be proved, and it must be shown that all reasonable 
 means have been used in order to make the invention productive ; 
 but that, in spite of such exertions, the remuneration obtained by 
 the inventor has either entirely failed, or has been quite dispro- 
 portionate to his merits, and to the benefit conferred upon the 
 public." (9 Moo. P. a a 393.) 
 
 (m) In re Caudwell's Patent. [1856] 
 
 The Judicial Committee of the Privy Council will not, as a 
 matter of course, extend letters patent, even when there is no 
 opposition, and the Crown, through the Attorney-General, does 
 not object. (10 Moo. P. G. G. 490.) 
 
 (n) In re Markwick's Patent. [1860] 
 
 The Eight Hon. Lord Kingsdown, in delivering judgment 
 said : " The petitioner is bound to prove three points — first, the 
 merits of the invention ; secondly, that the party interested has 
 done all in his power to bring out the invention, and to turn it 
 to advantage ; and thirdly, that, owing to circumstances beyond 
 his control, he has been unable to obtain an adequate remunera- 
 tion." (13 Moo. P. G. C. 313.) 
 
 (o) In re Napier's Patent. [1861] 
 
 Prolongation of the term of letters patented granted to assig- 
 nees, where the patentee has ceased to have any connection with 
 the working of the patent, and the assignees were prevented from 
 working it at a profit by reason of the discovery of the gold fields 
 in Southern Australia, which caused a derangement and scarcity 
 in the labour market. (13 Moo. P. G. G. 643.) 
 
 (p) In re Bovill's Patent. [1863]. 
 
 The patentee's invention consisted of improvements upon a 
 former patent, taken out by him in consequence of a communi- 
 cation by a foreigner : — Held, that as the improvements were novel 
 
112 EXTENSION OF TEEM: 
 
 and of putlic utility, the patentee was, in absence of adequate 
 remuneration, entitled to an extension. (1 Moo. P. G. C, N. 8., 348.) 
 
 (g) In re Norton's Patent. [1863] 
 
 The Master of the EoUs, in delivering judgment, said : " The 
 grounds upon -which their lordships grant extensions of patents 
 all have reference to the inventor himself. They are, in the 
 first place, to reward the inventor for the peculiar ability and 
 industry he has exercised in making the discovery ; in the second 
 place, to reward him because some great benefit of an unusual 
 description has by him been conferred upon tlie public through 
 the invention iti-elf ; or, lastly, because the inventor has not been 
 sufficiently remunerated by the profits derived from his strenuous 
 exertions to make the invention profitable. All these grounds 
 proceed upon the supposition that the invention is a new and 
 useful invention. But where the inventor intentionally delays 
 for a great length of time attempting to put it into practice, the 
 grounds for prolongation of the paterjt, which I have already 
 mentioned, cannot be relied on by him unles-s it be possible for him 
 to show t-ome reasonable excuse for the delay. In some circum- 
 stances there might be a considerable ground of excuse arising 
 from want of funds." (1 Moo. P. 0. C, N. S., 343 ; 9 Jur., N. 8., 
 420; 11 W. B. 721.) 
 
 (r) In re M'Dougal's Patent. [1867] 
 
 Extension ought not to be granted unless the invention is of 
 considerable merit and of public utility, and the patentee has 
 not received adequate remuneration. (5 Moo. P. G. G., N. 8., 1 ; 
 L. B., 2 P. G. 1.) 
 
 («) In re Pitman's Patent. [1871] 
 
 Sir J. W. Colvile, in delivering judgment, said : " The general 
 object of the statutaMe jurisdiction of this committee, in respect 
 to advising an extension of the term of the letters patent, it is 
 hardly necessary to state, is the reward to the inventor, in cases 
 where there has been extraordinary merit in the invention, but 
 where, from circumstances, he has failed to reap any adequate 
 remuneration for his invention during the currency of the term of 
 the letters patent." (i. B., 4 P. G. 87.) 
 
 (f) In re Houghton's Patent. [1871] 
 
 Prolongation of term of letters patent for seven years, the 
 invention being a meritorious one, and of great value as a raw 
 material for the manufacture of paper; no profits having been 
 made either by the inventor or his assignees. (7 Moo. P. G. C, 
 N. 8. 309.) 
 
 (u) In re Adaie's Patent. [1881] 
 
 Where a patentee, whether English or foreign, has obtained 
 foreign patents they should be stated and the fullest information 
 afforded as to the profits. An English patent may be renewed 
 
Merit of Inventor. 113 
 
 though a foreign one has been taken out and allowed to expire. 
 (6 Afp. G. 176.) 
 
 (v) In re Newton's Patents. [1884] 
 
 Sect. 25, Clause 4, does not alter the rules adopted by the 
 Judicial Committee. It is still the duty of a patentee applying 
 for an extension to produce accounts of all profits received under 
 foreign patents in respect of his invention. (9 Ajip. C. 592.) 
 
 («)) Stewart's Patent. [1885] 
 
 Evidence of prior publication tendered by the Attorney-General 
 without notice was admitted to show that there was not such 
 novelty in the invention as would justify a prolongation. (Griff. 
 264; 3 0. iJ. 7.) 
 
 (x) Eoper's Patent. [1887] 
 
 When the invention was of a meritorious nature (viz., for a 
 captain's bridge constructed as a self-launching raft) : — Held, that 
 having regard to that and to the difficulty of bringing it into use, 
 and the patentee's illness, and the fact that no opposition was 
 offered on behalf of the Crown an extension for seven years should 
 be granted. (4 O. B. 201.) 
 
 Merit of Inventor. 
 
 (y) In re Soames' Patent. [1843] 
 
 Lord Brougham : " The merit of an importer is less than of an 
 inventor. We are now sitting judicially, and it is an argument 
 against the patent, that it was imported and not invented. I do 
 not say it takes away the merit, but it makes it much smaller." 
 (1 Web. P. G. 733.) " It is very fit their lordships should- guard 
 against the inference being drawn, from the small amount of any 
 step made in improvement, that they are disposed to undervalue 
 that in importance ; if a new process is invented, if new machinery 
 is invented, if a new principle is found out and applied so as to 
 become the subject of a patent right, embodied in a manufacture, 
 then, however small it may be in advance of the state of science 
 or of art previous to the period of that step being made, that is no 
 reason whatever for undervaluing the merits of the person who 
 makes a discovery in science or an invention in art, because the 
 whole history of science is one continued illustration of the slow 
 progress by which the human mind makes its advance in dis- 
 covery. (J6. 735.) 
 
 The publication of a patented invention in a foreign work is 
 to be considfcired on an application for an extension of the patent, 
 but not in an inquiry as to the validity of the patent. (16. 733.) 
 
 (2) In re Derosnb's Patent. [1844] 
 
 Extension granted for six years of a patent for an invention, 
 which was " very small in point of discovery," but useful, gind of 
 great benefit to the public. (4 Moo. P. G. G. 418.) 
 
114 EXTENSION OF TERM: 
 
 (a) In re Woodcroft's Patent. [1846] 
 
 Eeference to a suggestioii, previously published, of tlie principle 
 upon which an invention is based does not prove w^ant of originality 
 unless it is shown that the invention could be easily made by it. 
 (2 Web. P. a 23.) 
 
 Lord Brougham : " I may invent a thing this year, and I may 
 say there are various ways of exercising my invention, to no one 
 of which I give a preference over the others. There are A., B. 
 and C, different ways of exercising it. Ten years after that 
 another man may, by an invention, and by experiments made 
 under it, point out to me and the public, who have the benefit of 
 my invention, that one of those three ways, B. rather than A. and 
 C, is the best mode of exercising it ; but that cannot take away 
 the merit of the inventor who invented A., B. and C, altogether. 
 Nay, I may go further, the circumstances may arise of a new 
 invention giving for the first time a particular use to another. 
 For example, no one denies to Watt the great merit of the steam 
 engine, because steam navigation was applied subsequently to his 
 time to the use of propelling ships. I quite agree that if another 
 man's invention is necessary in order to make the first invention 
 useful, no doubt that takes away the merit of the first invention ; 
 but if the first invention contained in its own bosom a new mode, 
 as well as the other two modes which are found out to be useful, it is 
 in vain to say there is no value in the original invention." (lb. 27.) 
 
 (a *) In re Mdntz's Patent. [1846] 
 
 The simplicity of an invention is an element of its value. (2 Web. 
 
 P. a 119.) 
 
 (6) Electric Telegraph Company's Patent. 
 
 A company which buys a patent for a commercial purpose, 
 although by so doing it does incidentally encourage inventors, 
 does not stand in the same position as an inventor who, himself 
 struggling with difficulty for want of capital, has been obliged to 
 obtain the assistance of persons who have capital. Cited Norton's 
 Patent. (1 Moor. P. C, N. S., 3.39 ; 1 Good. P. G. 554.) 
 
 (c) In re Lee's Patent. [1856] 
 
 Letters patent comprised three separate subjects. Upon an 
 application for an extension of the term of the patent, one only 
 of the three subjects (that relating to railway breaks) appeared 
 to the Judicial Committee to be deserving of a renewed grant. 
 Prolongation granted under statute 15 & 16 Vict. c. 83, s. 40, for 
 such part only of the letters patent as related to railway breaks, and 
 not to the other subject-matters of the patent. (10 Moo. P. C. G. 226.) 
 
 (d) In re Betts' Patent. [1862] 
 
 Utility in the practical working of an invention, and not 
 ingenuity in throwing out the idea of the possibility of doing 
 a thing, is that description of merit which constitutes one of the 
 grounds for extending the term of a patent. (1 Moo. P. G. G. 49.) 
 
Merit of Inventor. 115 
 
 Lord Chelmsford, in delivering judgment, said : " Dobbs' speci- 
 fication may have given the petitioner the idea of the possibility 
 of uniting the two metals of tin and lead, and may thus have 
 deprived him of the merit of originality. But in Dobbs' hands 
 the discovery was barren ; the petitioner, however, who followed 
 out his suggestion, and after repeated experiments gave it a 
 practical application, is the real benefactor to the public, and is 
 entitled to claim that description of merit which constitutes one 
 of the grounds for extending the term of a patent." {Ih. 61.) 
 
 (e) Im re Hill's Patent. [1863] 
 
 Sir J. T. Coleridge, in delivering judgment, said : " In determi- 
 ning whether to recommend the prolongation of a patent or not, 
 even when the claim to a first discovery, and the beneficial nature 
 of that discovery, are both conceded, it will be still proper to 
 consider both the degree of merit as inventor and the amount of 
 benefit to the public flowing directly from the invention. A 
 laonopoly limited to a certain time is properly the reward which 
 the law assigns to the patentee for the invention and disclosure to 
 the public of his mode of proceeding. Whether that term shall 
 be extended, in effect whether a second patent shall be granted 
 for the same consideration, and the enjoyment by the public of its 
 vested right be postponed, is to depeud on the exercise of a 
 discretion, judicial indeed, yet to be influenced by every such 
 circumstance as would properly weigh on a sensible and considerate 
 person in determining whether an extraordinary privilege, not of 
 strict right, but rather of equitable reward, should be conferred. 
 Now, one may be strictly an inventor within the legal meaning of 
 the term — no one before him may have made and disclosed the 
 discovery in all its terms as described in his specification — but 
 this may have been the successful result of long and patient 
 labour, and of great and unaided ingenuity, without which, for 
 all that appears, the public would never have had the benefit of 
 the discovery ; or it may have been but a happy accident or a 
 fortunate guess ; or it may have been very closely led up to by 
 earlier, and in a true sense, more meritorious, but still incomplete 
 experiments. Different degrees of merit must surely be attributed 
 to. an inventor under these different circumstances. The moral 
 claim to an extension of time may in this way be indefinitely 
 varied, according as the circumstances approach nearer to the one 
 or the other of the above suppositions. The same principle will 
 apply to the consideration of benefit conferred upon the public. 
 The extent of the benefit conferred must vary in each case with 
 the circumstances. The principal question always is, has the 
 individual patentee, under all the circumstances, received what in 
 equity and good sense may be considered a sufficient remuneration ? 
 On his own part, of course, there must have been no want of good 
 faith or prudent exertion ; and further, as the loss to the public 
 may be important in the consideration, it may be necessary in 
 some cases not to confine the inquiry to the state of things at the 
 date of the patent, but to legard also the circumstances existing 
 
 I 2 
 
116 EXTENSION OF TEEM : 
 
 at the timewheii the application is made." (.1 Moo. P. G. C, N.IS., 
 265.) 
 
 (/) Sillae's Patent. [1882] 
 
 In this case, the facts of which are set out at p. 130, Sir Barnes 
 Peacock said : " It appeared that the three patentees had received' 
 altogether for their patent over £27,000 ; that being divided 
 among the three patentees woiild be £9000 for each, which their 
 lordships think an ample remtineration for the patentees them- 
 selves for the invention. But then the application is not made 
 by the patentees, it is made by the Native Guano Company, who 
 are the assignees of the patentees, and the question is whether 
 their meritoriousness is such as entitles them lo have the patent 
 extended, looking to the benefits they have conferred upon the public 
 bj carrying on the invention assigned to tliem. (His lordship then 
 referred to Norton's case and the Electric Company's case.) Did 
 they form themselves into a company with the object of re- 
 munerating the inventors and enabling them to carry on this 
 patent? .... There has been no case cited, and I do not think 
 any case could have been cited in which their lordships have re- 
 commended an extension for the benefit of a joint stock company 
 who have floated their shares in the market, and made consider- 
 able sums by doing so. This company, by merely selling shares 
 at a premium, appears to have realised a sum of £44,000, and that 
 has been obtained not by selling the shares at par to persons 
 willing to come in and work the patent, but by selling to stock- 
 brokers, who bought them not for the benefit of the public but 
 for the purpose of selling them again on the Stock Exchange. 
 It appears to their Lordships that this company took over this 
 invention as a speculative undertaking, and the mode in which 
 the company have dealt with their shares shows that they were 
 carrying on their operations for the purposes of speculating rather 
 than for the purpose of bentfiting the public. No doubt in all 
 the cases in which they have endeavoured to carry out the patent 
 they have been losers; they have lost to the extent of £138,707." 
 (1 Good. P. a 581.) 
 
 (g) Stoney's Patent. [1888] 
 
 To obtain prolongation there must be in the invention greater 
 merit than would support the patent in the first instance, or 
 against a plea of inutility, and to obtain prolongation beyond 
 seven years there must be special merit. When a patent is from 
 its nature, e.g. for improvements in sluices and floodgates, only 
 capable of being employed to an occasional or limited extent, that 
 is a special circumstance to be considered. (5 O. B. 518.) 
 
 Utility of Invention. 
 Qi) In re Weight's Patent. [1839] 
 
 The fact of the invention not having been brought into use, 
 unless explained, is an objection to the extension of the term. 
 
Utility of Invention. 117 
 
 But, being explained by the peenniary difScnlties' and embarrass- 
 ments of the patentee, extension recommended. (1 Web. P. G. 
 575.) ^ 
 
 (i) In re Downton's Patent. [1839] 
 
 The sale of a patented article in considerable numbers, when 
 its cost is three or four times as great as the common article, is 
 strong evidence of utility. (1 Weh. P. C. 565.) 
 
 (?■) In re Jones' Patent. [1840] 
 
 The presumption arising from the' non-user of an invention may 
 be rebutted by showing that the nature of an invention is such 
 that it would not be likely to come into immediate use. (1 Web. 
 P. a 577.) 
 
 (F) In re Simister's Patent. [1842] 
 
 The extension of the term of letters patent refused, although 
 the profit derived from the patent article was less than the 
 expenditure incurred upon the patent, the utility of the invention 
 being small. 
 
 The fact of an invention, when known, not getting into 
 general use, is a presumption against its utility. (4 Moo. P. G. 
 164; 1 Web. B. 721.) 
 
 (Z) In re Soames' Patent. [1843] 
 
 The fact of further improvements upon the patented invention 
 having been made, though not themselves patented, is an argu- 
 ment in favour of an extension of the original patent. (1 Web. 
 P. G. 734.) 
 
 (m) In re Woodceoft's Patent. [1846] 
 
 No extension will be granted if want of success be owing to 
 inutility, or unless the circumstances have ceased which pre- 
 vented it being lucrative, and it is really coming into use. (2 Web. 
 P. G. 29.) Lord Brougham, in the course of his judgment, said : 
 " We cannot here weigh degrees of merit in golden scales. If 
 there is considerable merit, with originality and some considerable 
 usefulness to the public, that is sufficient." (lb. 31.) 
 
 (n) In re Bereington's Patent. [1852] 
 
 An application on behalf of a patented knapsack was supported 
 by very favourable reports from officers who had examined it. It 
 was deposed that the fact of nine out of ten men in our infantry 
 becoming flat-chested was to be attributed to the one in ordinary 
 use. Some hundreds had been expended on it by the patentee, 
 but hitherto without return. The committee, allowing their doubt 
 as to its utility (arising from its not having been adopted by the 
 government) to be slightly founded, in the absence of evidence of 
 its failure, recommended its extension for five years. (Coryton's 
 Law of Letters Patent, p. 225.) 
 
118 EXTENSION OP TERM : 
 
 (o) In re Heath's Patent. [1853] 
 
 An alteration in the mode of manufacture will not prevent 
 extension being granted, if it does not materially detract from th.e 
 merit of the original invention. (8 Moo. P. C. G. 223.) 
 
 (p) In re Bakewell's Patent. [1862] 
 
 A patent, well known, had never teen brought into public use 
 during the period of fourteen years. The patentee accounted 
 for the non-user, on the ground that the invention was of such a 
 nature that it could only be carried out by a company, which he 
 had failed to form : — Held, not sufficient to rebut the presumption 
 against the practical utility of the patent, and an extension of the 
 term refused. (15 Moo. P. C. C. 386.) 
 
 (g) Euthveu's Patent. 
 
 Their lordships cannot disregard the manner in which the 
 Admiralty and those who represent the will of the Crown and the 
 inclination of the Crown in cases of this nature view this matter 
 (i.e. utility). (Cited Hughes' Patent, L. B. 4 App. 179; 1 Good, 
 P. G. 578.) 
 
 (r) In re Allan's Patent. [1867] 
 
 Application for a prolongation of the term, in the circumstances 
 of non-user, refused by the Judicial Committee. 
 
 Where the utility of a patent has not been tested by actual 
 employment, for a period of fourteen years, although eflbrts have 
 been made by the patentee to bring it into use, it raises a very 
 strong presumption against its practical utility, which presump- 
 tion can only be rebutted by the strongest evidence. (4 Moo. 
 P. G. G., N. S. 443 ; L. B., 1 P. C. 507.) 
 
 («) In re M'Dougal's Patent. [1867] 
 
 Petition for the prolongation of a patent for " improvements in 
 treating, deodojizing and disinfecting sewage and other offensive 
 matter, which said improvements are also applicable in deodorizing 
 and disinfecting in general." The improvement consisted in the 
 use of a substance described in the specification as composed of 
 sulphurous and carbolic acids, in combination with magnesia and 
 lime, such acids being in common u.^e by the public for dis- 
 infecting purposes before and after the letters patent : — Held, not 
 to be an invention of such merit and utility as to justify an ex- 
 tension, to the detriment of the public in the use of tnown 
 sanitary agents. (5 Moo. P. G. G., N. S. 1 ; L. B. 2 P. C. 1; 
 37 L. J., P. C. 17.) 
 
 (t) In re Herbekt's Patent. [1867] 
 
 If an invention has not been brought into practical use during 
 the term of the letters patent, it raises a strong, though not con- 
 clusive, presumption against its utility ; and unless there are 
 circumstances to rebut such presumption, an extension of the term 
 of letters patent will not be granted. 
 
Utility of Invention. 119 
 
 The fact of a patent of a valuable nature having a limited 
 market, and therefore not having been so generally used as to 
 remunerate the inventor, is sufficient to remove the presumption 
 against the utility of the invention. (4 Moo. P. C. C, N. S. 300 ; 
 L. B., 1 P. a 399.) 
 
 (m) Clifford's Patent. [1867] 
 
 If a patent invention has been brought fully before the attention 
 of those who are interested in its use and application, and for 
 fourteen years the patentee has had the exclusive right to the 
 patent, at the end of that term (the privilege being somewhat in 
 the nature of a contract with the public) they should have the 
 power to use the patent. (Cited Herberts Patent, L. B. 1 P. G. 
 399 ; 1 Good. P. a 660.) 
 
 («) In re Saxby's Patent. [1870] 
 
 Lord Cairns, in delivering judgment, said : " It is not the 
 practice of this tribunal to decide upon the novelty or utility of a 
 patent ; and although they would of course abstain in any case 
 from prolonging a patent which was materially bad, yet, in one 
 point of view, they are in the habit, in taking into account that 
 which may be termed the question of utility, to consider not that 
 amount of utility which would be necessary to support a patent, 
 but that kind of utility which might more properly be described 
 as merit. Upon that question, it is the habit of this tribunal to 
 consider whether the invention brought before them is one of that 
 high degree of merit which, if everything else were satisfactory, 
 would entitle the patentee to a prolongation." (7 Moo. P. G. G., 
 N. S. 84.) 
 
 (y *) In re Hughes's Patent. [1879] 
 
 In all cases where the utility of a patented invention has not 
 been tested by actual employment, the question to be considered 
 is, whether the evidence is sufficient to rebut the presumption 
 that the invention is one of no practical utility which arises from 
 its non-user. 
 
 Application for prolongation of the term granted, after strong 
 and unanswered evidence of utility, the patent not having been 
 used in England, though it had been used abroad, during any part 
 of the time. (L. B., 4 App. Gas. 174.) 
 
 (w) In re Napier's Patents. [1881] 
 
 When it was shown that part of what was claimed in the 
 specification was useful in its application to certain machines, an 
 extension was granted limited to that part and to the application 
 thereof to those particular machines. (6 App. G. 174.) 
 
 (a;) Willacy's Patent. [1888] 
 
 When the utility of the third claim alone was shown, and the 
 accounts did not specifically deal with that claim, the petition was 
 refused. (5 0. B. 690.) 
 
120 EXTENSION OF TERM : 
 
 Bemuneration. 
 (y) In re Bate's Patent. [1836] 
 
 A large sum of money and much time being expended on 
 eooperiment to perfect the invention, without any return, the patent 
 extended. (1 Web. P. C. 739 (ra).) 
 
 (z) In re Egberts' Patent. [1839] 
 
 A patentee is entitled to deduct the expenses of taking and 
 defending a patent, and the value of his time devoted to the 
 invention, in estimating the profits derived from the patent. 
 (1 Weh. P. a 575.) 
 
 (a) 7» re Kay's Patent. [1839] 
 
 In estimating profits the expense of taking and defending the 
 patent and of making experiments are to be deducted. (1 Web. 
 P. C. 572.) 
 
 (6) In re Downton's Patent. [1839] 
 
 On application by the widow of the patentee, who died in 
 1839, to extend a patent granted in 1825, on the ground of 
 inadequate remuneration having been received by him in his 
 lifetime, owing to want of capital, an extension was granted for 
 five years, and the petitioner's costs were ordered to be paid, the 
 opposing party having shown no good ground for their opposition, 
 the Attorney-General appearing for the Crown. (1 Web. P. G. 
 565.) 
 
 A r^ord : " When a party has shown great ingenuity in an 
 invention, and, from want of capital and means, has not been able 
 to obtain an aaequate return, we have over and over again 
 extended the patent under such circumstances. . . . We generally 
 want this proof — that they made nothing for the first seven or 
 eight years, and it only began to be profitable during the latter 
 years. It is no case for an extension only to show that you made 
 £200 a year for the first fourteen years, and you want to make 
 £200 a year for seven years more." (16. 566.) 
 
 (c) In re Qtjaeeill's Patent. [1840] 
 
 The petitioner having purchased the letters patent and stock in 
 trade at a fair price of the patentee, and sustained no loss, the 
 application for an extension of the term refused. (1 Weh. P. G. 
 740.) 
 
 The actual expenses and receipts must be shown : it is not 
 sufficient to show generally that there has been no profit. (IK 
 
 (d) In re Jones' Patent. [1840] 
 
 The insufficiency of the usual term to afford remuneration, 
 regard being had to the nature of the invention, is a ground for 
 the extension of the term, provided the invention be meritorious 
 and useful to the public. Semble, that it is not necessary to 
 show a probable ground for supposing that the petitioners 
 
Bemwieration of Inventor. 121 
 
 would' be remunerated by tbe extension prayed. (1 Weh. P. 0. 
 
 (e) In re Galloway's Patent. [1843] 
 
 The expense of litigation, the cost of the patents, the expense of 
 bringing the invention into use, and a manufacturer's fair profit, 
 must be deducted in estimating the profit derived by the monopoly. 
 (1 Weh. P. a 729.) 
 
 (/) In re Derosne's Patent. [1844] 
 
 The term of letters patent, for refining sugar by filtration 
 through beds of granulated animal charcoal, extended for six 
 years, on the ground that, although the patentee had realized a 
 very reasonable profit, he had not derived a benefit to the same 
 extent as that derived by the public from the invention. (2 Web. 
 P.G.I; 4 Moo. P. a 0. 416.) 
 
 {g) In re Perkins' Patent. [1845] 
 
 Lord Langdale : " The question is what remuneration has been 
 received under the patent, as a whole, not for any particular 
 branch of it. ... It is not intended that a patent should be 
 divided and subdivided, and that you are to see whether he has 
 received compensation upon one part and not upon another. The 
 question is, whether the patent is to be renewed, which depeuds, 
 amongst other things, upon this, whether he has received 
 reasonable compensation during the first term for which it was 
 granted. If there were ten branches of the patent, if he had 
 received £10,000 under one of them, although he had received 
 nothing under the other nine, it would be very qtiestionable 
 whether the Judicial Committee ought to grant an extension of 
 the patent." (2 Web. P. G. 9.) 
 
 Per Lord Campbell : It is desirable, before applications for 
 extension are heard, that the balance sheet should be handed 
 over to the Solicitor for the Treasury, to examine it beforehand. 
 (lb. 14.) 
 
 It is material to consider, on applications for extension, in what 
 ratio the profits have increased, if they have increased from year 
 to year. (lb. 16.) 
 
 (¥) In re Lowe's Patent. [1846J 
 
 The patentee was unable to show, in the usual way, from his 
 books, that he had not derived from the sale of his invention an 
 adequate remuneration. The patentee not having sold any of his 
 patented machines had kept no books, but he had allowed a gas 
 company, in numerous instances, to apply his invention, for the 
 purpose of making its utility known. The manager of the gas 
 company deposed that he was not aware of the patentee having 
 ever derived any benefit from his invention, and that they had not 
 paid him anything in respect of it. 
 
 Sir S. Lushington said : " Although there has been no direct 
 evidence given of want of profit, which is a very important part 
 
122 EXTENSION OF TEEM: 
 
 of the petitioner's case, yet the evidence does show a primd facie 
 case of no profit ; and their Lordships are inclined to come to the 
 conclusion that they are satisfied with the evidence, unless the 
 Crown has reason to be dissatisfied with it. In these applications 
 we have never permitted the petitioner to give evidence in his 
 own case ; hut, if the Crown does not intend to raise the objection, 
 that there is no proof of want of remuneration, then their 
 Lordships are content with the evidence as it is." Patent 
 extended. (10 Jur. 363.) 
 
 (i) In re MuNTz's Patent. [1846] 
 
 Where a patentee has obtained his remuneration by the manu- 
 facture of the patented article during the existence of the patent, 
 it is impossible to sever the profits realized as a manufacturer 
 from those realized as a patentee. (2 Weh. P. G. 121.) 
 
 The patentee having made 65,000Z. by the manufacture, 
 extension refused, on the ground that he had been sufficiently 
 remunerated. 
 
 (j) In re Hardy's Patent. [1849] 
 
 In estimating the profits made under a patent, the profits 
 arising from the sale of the patented article for exportation must 
 be added. (6 Moo. P. 0. G. 441.) 
 
 (Ji) In re Bridson's Patent. [1852] 
 
 Application, under statute 14 & 15 Vict. c. 99, s. 6, by parties 
 who opposed an extension of letters patent, for production and 
 inspection of the petitioner's accounts previous to the hearing of 
 the petition, refused, with costs. (7 Moo. P. G. G. 499.) 
 
 (Z) In re Heath's Patent. [1863] 
 
 "Where the estate of a deceased patentee was of little value, and 
 no accounts had ever been kept, the petitioner, the administratrix 
 and widow of the patentee, was examined to prove an allegation 
 in the petition, to the effect that not only had there been no 
 profits but a considerable loss. (8 Moo. P. G. G. 222.) 
 
 (Z*) Ib re Eydee's Patent. [1855] 
 
 The fact that the profits (which were £7000) had all been made 
 in the last four years, is no ground for an extension where the 
 sum realised is large. {John. 213.) 
 
 (m) In re Maekwick's Patent. [1860] 
 
 The accounts produced at the hearing were unsatisfactory, 
 owing to the non-production of the books. The Judicial Com- 
 mittee, in recommending a prolongation of the term of the letters 
 patent, directed a proper account of the profits and losses of the 
 patent, to be verified by affidavit, with an explanation accounting 
 for the non-production of the hooks, to be laid before the Attorney- 
 General, subject to which they extended the term. (13 Moo. 
 P. G. C. 310.) 
 
Bemwneration of Inventor. 123 
 
 (■n) In re Newton's Patent. [1861] 
 
 Letters patent fot an invention commnnicated by a foreigner 
 resident abroad, extended for five years. The invention (ma- 
 cbinery for letter-press printing) was of a meritorious and useful 
 character, but of an expensive nature, and only at the latter end 
 of the term of the letters patent brought into public use ; and, 
 although the patent had been ■worked at a profit, it was not, in the 
 opinion of the Judicial Committee, sufficiently remunerative, con- 
 sidering the value of the invention. (14 Moo. P. C. 0. 156 ; 
 10 W. B. 731.) 
 
 In taking an account of the profits and loss of the working of 
 a patent, the patentee is entitled to charge, as part of his expenses, 
 for loss of time in endeavouring to bring the invention into 
 general use. (lb.) 
 
 (o) In re Hutchinson's Patent. [1861] 
 
 The books of the petitioner in respect to profits arising from 
 his patent having been lost during his bankruptcy, the account 
 of profit and loss was taken upon his own evidence. (14 Moo. 
 
 P. a a 364.) 
 
 (p) J« re. Betts' Patent. [1862] 
 
 The account of profit and loss of the patentee in working a 
 patent ought to be clear and precise ; and it is the duty of a 
 patentee, if engaged in any other business, or as a manufacturer 
 of his own invention, to keep the accounts of the patent and the 
 manufacture separately. 
 
 If a patentee is also manufacturer of his patent article, in 
 taking account of the profits of the patent, he is entitled to 
 deduct his profits as a manufacturer, as also the expenses caused by 
 litigation in protecting his patent right. (1 Moo. P. 0. C, N. S. 49 ; 
 9 Jur., N. S. 137 ; 11 W. B. 221 ; 7 L. T. Bep., N. S. 677.) 
 
 (q) In re Hill's Patent. [1863] 
 
 The most unreserved and clear statement of the patentee's 
 remuneration is an indispensable condition in an application for 
 an extension. 
 
 The patentee was also manufacturer and sold the patented 
 article. In his accounts he deducted two-thirds as profits from 
 the manufacture and sale, and only credited the patent with one- 
 third : — neld, to be an unreasonable deduction. 
 
 Although law expenses incurred by the patentee in maintaining 
 his patent rights are allowed in deduction of his profits, yet, 
 where the patentee compromised suits and gave up costs to which 
 he had an apparent title, a deduction on that head will not be 
 allowed. (1 Moo. P. 0. C, N. S. 258; 9 Jur., N. S. 1209; 
 12 W. B.25; 9 L. T. Bep., N. S. 101.) 
 
 (r) In re Teotman's Patent. [1866] 
 
 To entitle a patentee to a prolongation of the term of letters 
 patent, he must satisfactorily establish the amount of his profits. 
 
124 EXTENSION OF TERM: 
 
 Licensees stand, with respect to the profits, in the same position 
 as assignees of the patent. 
 
 A patentee did not manufacture or sell the patented article 
 (ship anchors), but granted licences to ironsmiths to manufacture, 
 from whom he received royalties. On an application by him for 
 an extension of the term of the letters patent, on the ground of 
 inadequate remuneration, the accounts produced of his own expen- 
 diture in carrying on the patent being unsatisfactory, and no 
 accounts giren of the profits derived by the licensees, a prolonga- 
 tion of the letters patent was refused, first, as the patentee's 
 accounts were unsatisfactory, and secondly, from the patentee's 
 having so dealt with his patent rights as to deprive him of the 
 power of showing the amount of profit derived from the working 
 of the patent. (3 Moo. P. C. C, N. S. 488 ; L. B., 1 P. C. 118.) 
 
 («) In re Poole's Patent. [1867] 
 
 A patentee residing in America, for the purpose of getting the 
 patented article into general use in England, arranged with an 
 agent in England, and in consideration gave him a moiety of the 
 royalties : — Held, that in estimating the profits of the patentee 
 deiived from the patent, such moiety was to be deducted. (4 Moo. 
 P. C. a, N. S. 452; X. B., 1 P. C. 514.) 
 
 Lord Eomilly, in delivering judgment, said : " There is no 
 account of what profits he (the patentee) made in the United 
 States, nor do their Lordships think it material fur this purpose, 
 because the question before them is, what profits were made and 
 what benefits were sustained by the introduction of the invention 
 into this country." (4 Moo. P. C. C, N. S. 456.) See in re 
 Johnson's Patent, p. 126 (x). 
 
 (t) In re Saxby's Patent. [1870] 
 
 Where the patentee is also the manufacturer, the profits which 
 he makes as manufacturer, although not strictly profits of the 
 patent, must yet be taken into consideration in estimating the 
 amount of his remuneration. Therefore, where, on a petition for 
 prolongation, it appeared that the patentee was at the same time 
 the manufacturer of the patented article, and was himself neces- 
 sarily engaged in fixing and putting up the patented apparatus, 
 and that the accounts for such services were so intermixed as to 
 render it impossible on their face to separate the items of profit 
 received from the patent, it appearing that, on the whole, the 
 receipts had been very large, and that even on the balance alleged 
 there had been considerable gain to the patentee, the Judicial 
 Committee held that such accounts were unsatisfactory, and 
 refused the application, but without costs. (7 Moo. P. C. C, 
 N. S. 82.) _ 
 
 Lord Cairns, in delivering judgment, said : " It is not for this 
 committee to send back the accounts for further particulars, nor 
 to dissect the accounts for the purpose of surmising what may be 
 their real outcome if they were differently cast; it is for the 
 applicant to bring his accounts before the committee in a shape 
 
Remuneration of Inventor. 125 
 
 which will leave no doubt as to what the remuneration has been 
 that he has received." (16. 85.) 
 
 (m) In re Clark's Patent. [1870] 
 
 A petitioner, seeking the grace and favour of the Crown, in 
 applying for an extension of the term of letters patent, is bound 
 to bring his accounts before the committee in such a shape as to 
 leave no doubt what the remuneration has been that he has received 
 from the patent. 
 
 The petition for extension, and the accounts furnished by the 
 petitioner (the patentee) not containing sufficiently full and 
 accurate information in respect to the patent, or the remunera- 
 tion received by him, the Judicial Committee declined to recom- 
 mend a prolongation of the term. 
 
 The principle, where the statement of the remuneration received 
 by the patentee, is on the face of the petition and accounts filed 
 unsatisfactory, of adjudicating without reference to the merits of 
 the invention, as acted on in Saxby's Patent, recognised. (7 Moo. 
 P.G. a, N. S. 255.) 
 
 («) In re Houghton's Patent. [1871] 
 
 The statement of accounts furnished being prima facie satis- 
 factory, the petitioners were allowed to prove the merits of the 
 invention before going into the accounts. (7 Moo. P. 0. G., 
 N. S. 309.) 
 
 Lord Justice James : " Their Lordships think that the cases 
 of Saxby's Patent and Clark's Patent only go to this extent, that 
 where there are special statements which show upon the face of 
 the accounts, that the petitioners have, in fact, made very large 
 profits by their invention, as was the fact in both those cases, such 
 circumstance is sufficient fur their Lordships at once to determine 
 the application without going into the question of the merits of 
 the invention." (lb. 311.) 
 
 (w) In re Wield's Patent. [1871] 
 
 Accounts of profits and loss filed by a patentee on his application 
 for a prolongation of the term of letters patent being prima facie 
 unsatisfactory, the Judicial Committee directed the question of 
 accounts to be taken before considering the merits of the invention. 
 As the accounts were not satisfactorily explained, the application 
 for a prolongation was refused. 
 
 The difference between the sum for which a patentee has sold 
 his patent and that which he has paid in buying it again cannot 
 be allowed in the accounts as one of loss, but must be regarded as 
 a mere commercial speculation. (8 Moo. P. C. C, N. S. 300 ; L. B., 
 4 P. C. 89.) 
 
 (x) In re Johnson's Patent. [1871] 
 
 When the possession of the patent has brought to the patentee 
 the power of commanding orders as a manufacturer, it is to be 
 
126 EXTENSION OF TEEM: 
 
 taken into consideration in estimating the profits derived from 
 the patent. (8 Moo. P. C. C, N. S. 291.) 
 
 James, L.J., said : " It was suggested to their Lordships that 
 they ought not to take into consideration any of the profits made 
 in America, and reference was made to Poole's Patent. Their 
 Lordships desire it to he understood that that case is not to be con- 
 sidered as laying down any general rule of law. Where the 
 question to be considered is, whether an invention has been suffi- 
 ciently remunerated or not, their Lordships must have regard to 
 the remuneration which the invention has brought in to the 
 patentee, or the person who claims the right of the patentee, 
 whether it be in one country or another." (16.) 
 
 (jy) In re Care's Patent. [1873] 
 
 Circumstances showina; a want of adequate remuneration, an 
 extension of the term of letters patent granted for six years. 
 
 In estimating the profits derived from the patent, the Judicial 
 Committee will take into consideration a deduction from the 
 profits of the patent for the personal expenses of the patentee for 
 the exclusive devotion of his time in bringing the patent into 
 practical operation and public notice, (i. B., 4 P. C. 639 ; 9 Moo. 
 
 P. a a, N. s. 379.) 
 
 (z) In re Johnson's and Atkinson's Patents. [1873] 
 
 The Judicial Committee will not enter upon the accounts, in a 
 case for extension, unless they have been filed in accordance with 
 the rules. (£. B., 5 P. C. 87.) In Chatwood's patent the same 
 course was followed. (lb. 89 (n).) 
 
 (a) In re Adaik's Patent. [1881] 
 
 Where a patentee, whether English or foreign, has obtained 
 foreign patents they should be stated, and the fullest information 
 afforded as to the profits. A patentee applying for extension 
 must be prepared, with the clearest evidence, of everything paid 
 and received on account of the patent. (6 App. G. 176.) 
 
 (a*) Child's Patent. [1883] 
 
 Child obtained a patent in 1869 for improvements in the manu- 
 facture of bread, and in 1873 he assigned it to the Aerated Bread 
 Company, of which he was chairman. In 1883 a central factory 
 was started in London, and the inventor made a large profit by 
 the rise in value of the shares of the company. Held, neverthe- 
 less, that he had not been sufSciently remunerated, and an ex- 
 tension for five years granted. (John. 214.) 
 
 (6) Bailey's Patent. [1884] 
 
 The patentee wished to deduct £400 from the net receipts for his 
 own remuneration, and a further sum as profits made by him as 
 salesman ; but as neither of these items appeared either on the 
 accounts, or in the petition, their lordships refused to hear evidence 
 about them. (Griff. 253 ; 1 0. B. 1.) 
 
Bemmieration of Inventor. 127 
 
 (c) Bischof's Patent. [1884.] 
 
 The patent being a meritorious one, for improvements in the 
 means for the purification of water, and the accounts showing that 
 the patentees had sustained a loss, extension was granted; and 
 following the precedent of Spencer's Case, where the patent was 
 also for purifying water, the period of extension was fixed at seven 
 years. (1 O. B. 162.) 
 
 (d) Duncan and Wilson's Patent. [1884] 
 
 A company, who have for a considerable time been assignees of 
 the patent, and have also carried on a general business, are bound 
 to keep their accounts so as to show, on an application for exten- 
 sion, what is to be applied to the patent business. There is no 
 specific rule as to what proportion of the nett profits is to be attri- 
 buted to general manufacturing profit, but two-thirds is too large 
 a proportion. {Griff. 258 ; 1 0. B. 257 ; 1 T. L. B. 59.) 
 
 (e) Horsey's Patent. [1884] 
 
 Where the petition was presented by a company, and it was 
 alleged that neither Horsey nor the company had been adequately 
 remunerated, but it appeared that, although the Companies Act 
 had been literally complied with, no bond fide company in any com- 
 mercial sense had been formed : — Held, that uberrima fides had not 
 been maintained, and the petition was dismissed. {Griff. 261 j 
 
 1 0. B. 225.) 
 
 (/) FuENEss's Patent. [1885]- 
 
 Their lordships being unable to say " that the patentee had been 
 inadequately remunerated," refused the extension. {Griff. 260 ; 
 
 2 0. B. 175.) 
 
 (gr) Deacon's Patent. [1887] 
 
 In a petition for prolongation of a patent, where the patent 
 rights have been transferred either in whole or in part to a com- 
 pany, it is essential that there should be deposited, not only the 
 patentee's accounts of his profits, but, in order to test them, the 
 account also of the company ; but : — Seld, that in this case, having 
 regard to the great merit and usefulness and advantage to the 
 public of the patentee's discovery (which was for an improved 
 apparatus for measuring the flow of water in pipes), prolongation 
 for three years should be granted. (4 0. E. 119 ; 3 T. L. B. 
 349.) 
 
 (A) Bbaniand's Patent. [1887] 
 
 No exceptional merit or utility being proved : — Reld that, under 
 all the circumstances, the remuneration was adequate. (4 L. T. B. 
 30 ; 4 0. B. 489.) 
 («■) NussEY AND Leachman's Patent. [1889] 
 
 The net profit from a patent dated 1876 had been £4000, and 
 in 1886 the patentees had obtained a patent for an improved 
 machine, which had practically superseded the old machine. 
 
128 EXTENSION OF TEEM: 
 
 Meld, that in all the ciroumstances the remuneration was suffi- 
 cient. (7 0. B. 22.) 
 
 Objections to Extension. 
 
 (i) In re Woodcroft's Patent. [1841] 
 
 An invention as described in the specification, having succeeded 
 at first to a limited extent for certain patterns and colours, but 
 being inapplicable for the more elaborate patterns and brighter 
 colours, until rendered so by means of certain improvements intro- 
 duced from abroad, whereby it had become of great value, an 
 application for the extension of the patent was refused. (1 Weh. B. 
 740 ; 3 Moo. P. C. G. 171.) 
 
 (/) In re Simistee's Patent. [1842] 
 
 Semhle, that negligence on the part of the patentee in restraining 
 infringement is a ground of opposition. (1 Web. P. G. 724 j 
 4 Moo. P. G. G. 164.) 
 
 Qc) In re Galloway's Patent. [1843] 
 
 The fact of great improvements having been made on the 
 original invention, affords no objection to the extension of the term. 
 (1 Web. P. G. 727.) 
 
 (Z) In re Bell's Patent. [1846] 
 
 Application for the extension of a patent for manufacturing 
 lucifer matches and boxes. The want of profit arose from two 
 circumstances : first, a defect in the composition with which the 
 match was loaded, which was not rectified until ten years after 
 the date of the patent ; secondly, great loss had resulted from a fire 
 which occurred on the premises, and, when the premises were 
 rebuilt, the petitioner discovered that no insurance office would 
 insure the premises, and that the terms of his lease obliged him to 
 insure, and that, consequently, he was obliged to build other pre- . 
 mises. The profits did not commence till three yea,rs before the 
 expiration of the patent, and at the time of petition were under 
 £700. Extension refused. (10 Jur. 363.) 
 
 (m) In re Pinkus' Patent. [1848] 
 
 The non-reduction of an invention to practical operation in such 
 a manner as to contribute to the public service, and the absence of 
 evidence to prove the probability of its being so reduced into prac- 
 tice in the future, coupled with the fact that the patentee has 
 allowed his patent to be infringed without any assertion of his 
 right at law, is a sufficient ground for refusing to prolong a patent. 
 Lord Langdale, M.E., said : " Upon the effect, the utility and the 
 merit of the patentee's contrivance, there has been considerable 
 evidence, and also upon the supposed futility of that contrivance. 
 What is perhaps the strongest evidence, or the evidence upon 
 which the best reliance can be placed, is this : that, from the time 
 when the patent was granted up to this present time, this plan has 
 
Ohjeetions to Extension. 129 
 
 not been reduced to practical operation in any way which has 
 been at all calculated to contribute to the public service ; at this 
 time it does not appear, at least there is no evidence whatever to 
 show, that, as to this plan — the plan which is described in the first 
 specification — there is now any, even the least, prospect of reducing 
 it to practical operation." (12 Jur. 234.) 
 
 (») In re Patteeson's Patent. [1849] 
 
 A patentee entered into an agreement with certain parties to 
 work his patent, but, owing to disputes between them, the inven- 
 tion was not prosecuted until a short time before the expiration of 
 the term of the letters patent. In such circumstances, an extension 
 was refused. (6 Moo. P. 0. G. 469 ; 13 Jur. 593.) 
 
 (o) Jji re Foarde's Patent. [1865] 
 
 After an assignee of a patentee had incurred considerable loss in 
 carrying out a patent for a smoke prevention apparatus, an Act of 
 Parliament passed to compel the owners of furnaces in the metro- 
 polis to construct some form of apparatus so as to consume their 
 own smoke : — Held, on an application for a prolongation of the 
 letters patent, that though the Act of Parliament might, in effect, 
 compel the use of the petitioner's patent, yet that such circum- 
 stance formed no objection to a renewal of the term of the letters 
 patent, the merits of the invention and loss incurred in carrying it 
 out being established. (9 Moo. P. G. G. 376.) 
 
 (p) In re Cardwell's Patent. [1856] 
 
 A patentee agreed by deed with a public company to grant them 
 exclusive licence to use his patented machine, and also covenanted 
 with them to obtain, at the expiration of the term, a renewal of 
 the patent for the same purpose. Under this deed the company 
 alone used the patent. An application by the patentee for a pro- 
 longation refused, on the ground that the agreement was contrary 
 to public policy, and repugnant to the provisions of the statute 
 5 & 6 Will. 4, c. 83, relating to prolongations of letters patent. 
 (10 Moo. P. G. G. 488.) 
 
 (g) Jjj re Noeton's Pateht. [1863] 
 
 Where a patentee has intentionally delayed for a length of time 
 attempting to put his invention into practice, an extension will not 
 be recommended, unless he can show some reasonable excuse, such 
 as want of funds, for the delay. (1 Moo. P. G. G., N. S. 339.) 
 
 (r) In re Gouchee's Patent. [1865] 
 
 In the objections filed by the objectors, the point was not taken, 
 that the power given by 7 & 8 Vict. c. 69, s. 2, to recommend an 
 extension of the term of letters patent for an invention, is exhausted 
 vrhen an extension has been once recommended, and new letters 
 patent granted : — Held, that the objection could be raised on the 
 application to fix a day for hearing of the petition. (2 Moo. P. 0. G. 
 532.) 
 
130 EXTENSION OF TEEM : 
 
 (ri) Sillar's Patent. [1882] 
 
 Tlie petitioners were assignees of the patent and trustees for the 
 Native Guano Company who held other patents relating to the 
 invention. The patented process, called the A. B. C. process, 
 was as follows : — liquid sewage was mixed in an open channel, 
 with liquid containing in suspension finely ground charcoal and 
 clay, mixed with a small percentage of blood. The sewage was 
 thereby deodorized and the solution was then treated with alum, 
 whereby the liquid became clear and the suspended matter was 
 deposited. The deposit was pressed and dried and sold as manure 
 under the name of native guano. Extension refused. 
 
 Sir Barnes Peacock said : " Any member of the public would 
 be prevented from using alum, clay, and charcoal for the purpose 
 of deodorizing sewage manure, using those ingredients in the 
 proportions stated, whether with blood or without, by adding 
 blood they would clearly infringe the patent. The question is 
 whether this patent is of such utility as to justify the renewal of 
 the patent, excluding the public upon this general specification, 
 from the use of those ingredients for the purpose, the use of two of 
 those ingredients, namely, alum and charcoal, being well known." 
 His Lordship referred to M'Dougal's case, and said, " so in this 
 case, it might and would be a detriment to the public to prevent 
 them from using those well-known substances, alum and charcoal, 
 in combination with clay with the proportion of blood given." 
 (^Good P. a 581.) 
 
 Questions of Validity. 
 
 (s) In re Eraed's Patent. [1835] 
 
 A patent will not be extended which is palpably bad, but their 
 Lordships only require a prima facie case to be made as to the 
 validity of the patent. (1 Web. P. G. 557, note (a).) 
 
 (0 In re Kay's Patent. [1839] 
 
 Extension of letters patent about to expire granted, pending a 
 suit involving the question of their validity, where the judgment 
 of the court cannot be obtained before the expiration of the patent. 
 It is sufficient to establish a prima facie case of the validity of a 
 patent on an application for an extension. (1 Web. B. 568 ; 3 Moo. 
 P. a C. 24.) 
 
 (a) In re G-alloway's Patent. [1843] 
 
 The new letters patent are granted subject to the same objections 
 as the old, and the questions of novelty and utility wiU not be 
 minutely entered on. (1 Web. P. C. 725.) 
 
 (y) In re Eobinson's Patent. [1845] 
 
 The use of an invention in England prior to the date of letters 
 patent granted for Scotland will invalidate the Scotch patent ; and 
 the Judicial Committee accordingly refused to confirm a Scotch 
 patent, the invention being used in England before the date of the 
 Scotch patent. (5 Moo. P. C. C. 65.) 
 
Questions of Validity of Patent. 131 
 
 (w) In re Woodcroft's Patent. [1846] 
 
 Lord Brougham, in delivering judgment, said : " In all cases 
 where there is a disputed right as to the validity of the patent, 
 and where the validity of the patent itself must come in question, 
 two things are to be considered. First, is the case to prove 
 the invalidity of the patent, to prove the patent void, clear, 
 past all ordinary and reasonable doubt; or, secondly, does the 
 case hang so doubtful, that their Lordships would retire from its 
 consideration, and not, because it is not necessary, decide the 
 question here. In the former instance, namely, where it is a 
 clear case, or nearly a clear case, their Lordships will not grant 
 an extension ; first, because they do not see merits, and, secondly, 
 because they will not put the parties against whom the patent 
 right is granted and is sought to be extended; to the vexation 
 and trouble and expense either of bringing a soire facias to 
 repeal the letters patent, or of sustaining an action for infringe- 
 ment. But where the matter hangs very doubtful, where there 
 is conflicting evidence, where upon the construction of the 
 specification or the patent, or in any other way, questions of 
 law or questions of fact, as it may be, shall arise, their Lordships 
 have not been used to refuse to exercise their discretionary 
 powers, vested in them by the legislature, of recommending an 
 extension, merely because elsewhere the validity of the patent 
 
 may reasonably be contested Nothing is decided here in 
 
 granting the extension as to the validity of the patent. All 
 objections to it are saved, of course." (2 Web. P. C. 30.) 
 
 (x) In re Pinkus' Patent. [1848] 
 
 Lord Langdale, M.E. : " On an occasion of this kind, this court 
 has, in no very direct way, occasion to consider whether the patent 
 is or is not valid at law. Unless the patent be very clearly 
 invalid, so that it would be altogether nugatory to prolong that 
 patent, the court usually has been rather inclined to assume that 
 the patent may be a good patent, and so leave the question to any 
 legal consideration that may arise in a contest between the parties 
 who are interested in it." (12 Jur. 234.) 
 
 (y) In re Heath's Patent. [1853] 
 
 The circumstance of there being lis pendens, respecting the 
 validity of the letters patent, is no objection to the grant of an 
 extension of the original letters patent. (8 Moo. P. G. G. 217 ; 
 2 Web. P. G. 247.) 
 
 (2) In re Bett's Patent. [1862] 
 
 If it can be clearly shown that the patent sought to be extended 
 is bad for want of originality, the Judicial Committee will not 
 entertain the application. Aliter, if at most, a doubtful question 
 as to the validity of the letters patent can be raised. (1 Moo. 
 P. G. G., N. S. 49.) 
 
 Lord Justice Turner, in the course of the argument, said : " A 
 
 K 2 
 
132 EXTENSION OF TERM: 
 
 sufficient prima facie case has been shown hy the judgment of the 
 House of Lords, in favour of the validity of this patent. It is not 
 the practice of this tribunal, in applications of this kind, to go 
 into the question of the validity or invalidity of the letters patent." 
 (lb. 52.) 
 
 (a) In re Hills' Patent. [1863] 
 
 Sir J. T. Coleridge, in delivering judgment, said : " Their 
 Lordships have not in these cases been in the habit of trying the 
 validity of patents. They will not, of course, recommend the 
 extension of a patent which is manifestly bad ; but, on the other 
 hand, they will not generally enter into questions of doubtful 
 validity. They lay aside, therefore, the questions of want of 
 novelty and want of utility, so far as they affect the validity of 
 this patent. Indeed, the learned counsel for the opponents dis- 
 claimed, and very properly, any intention of impeaching its 
 validity directly ; but they contended that, both with respect to 
 the novelty and the utility of the invention, the degree of merit to 
 be attributed to the petitioner ought to be taken into account ; and 
 in their Lordship's judgment they are right in that contention." 
 (1 Moo. P. 0. a, N. S. 262.) 
 
 (6) In re M'Dougal's Patent. [1867] 
 
 Sir "W. Erie : " It is not the duty of the Judicial Committee 
 upon such an application (extension) to adjudicate upon the 
 validity or invalidity of the patent itself, but they must, in 
 deciding whether the above conditions have been established, 
 ascertain the meaning of the specification," (6 Moo. P. G. C, 
 N. S. 4.) 
 
 (d) In re M'Innes' Patent. [1868] 
 
 The subject-matter of an invention was the employment of 
 a metallic soap, composed of well known chemical substances in 
 common use, which the specification described as applicable for 
 coating of iron and wood to prevent the fouling of ships' bottoms, 
 and for other useful purposes. Prolongation of the term of such 
 letters patent refused on the ground, first, that it would be 
 detrimental to the public interest ; secondly, that adequate re- 
 muneration (£2835) had been received. (5 Moo. P. G. G., N. S. 
 
 Sir W. Erie said : " Although this tribunal does not adjudicate 
 upon the validity of a patent, yet in a case where the validity is 
 doubtful, their lordships exercise a discretion in recommending, 
 or otherwise, the Crown to prolong the term." (16. 76.) "Their 
 lordships taking into consideration, with reference to the public 
 interest, that the individual substance, for the application of 
 which the patent is sought to be prolonged, is not specially 
 defined, every kind of metallic soap being within the limits of 
 the specification, are of opinion, that many questions affecting 
 the patent might be raised if any metallic soap was used by the 
 public in ignorance of the specification being as wide as it is. 
 
Grant of Extension. 133 
 
 On the whole, therefore, their lordships are of opinion, that 
 they ought not to recommend Her Majesty, under such circum- 
 stances, to grant a prolongation." (26. 78.) 
 
 The following cases which had reference to the extension of a patent for an 
 invention, also patented abroad, are omitted here, as the 15 & 16 Vict. ch. 83, 
 sect. 25, having been repealed by 46 & 47 Vict. ch. 57, sect. 113, the duration 
 of a patent foi- such an invention is no longer affected by the duration of the 
 foreign patent : — 
 
 Bodmer's Patent. (8 Moo. P. G. 0. 282). 
 
 Aube's Patent. (9 Moo. P. G. G. 43). 
 
 Newton's Patent. (15 Moo. P. G. G. 180).. 
 
 Hill's Patent. (1 Moo. P. G. C, N. S., 258). 
 
 Poole's Patent. (4 Moo. P. G. C, N. S., 452 ; L. B. 1 P. G. 514.) 
 
 Nobmand's Patent. (6 Moo. P. G. G., N. S., 477). 
 
 Winan's Patent. (8 Moo. P. G. C, N. S., 306). 
 
 Johnson's Patent. (L. B. 4 P. G. 79). 
 
 Blake's Patent. (L. B. 4 P. G. 537). 
 
 The Grant of Extension and Terms imposed. 
 
 Patent Act, 1883, Sect. 25. (5.) If the Judicial Committee report that 
 the patentee has been inadequately remunerated by his patent, it shall be 
 lawful for Her Majesty in Council to extend the term of the patent for a 
 further term not exceeding seven, or in exceptional cases fourteen, years ; 
 or to order the grant of a new patent for the term therein mentioned, and 
 containing any restrictions, conditions, and provisions that the Judicial 
 Committee may think fit. 
 
 The Grant, 
 (e) In re Kay's Patent. [1839] 
 
 The renewal grant of letters patent becomes invalid, if, after 
 extension, the original patent is held to be bad. (1 Weh. P. G. 
 571.) 
 
 (/) EussELL V. Ledsam. [1845] 
 
 Original letters patent, for a term of fourteen years, were 
 dated on the 26th of February, 1826, and renewed letters patent 
 were dated on the 26th of February, 1839: — Held: that the day 
 of the date must be reckoned inclusively, and that the former 
 term expired on the 25th of February, 1839, and consequently 
 the renewed letters patent were granted after the original letters 
 patent had expired. Eenewed letters patent, granted under 
 6 & 6 Will. 4, c. 83, s. 4, are not void if dated after the expira- 
 tion of the term for which the original letters patent were 
 granted, but may be granted by the Crown after the expiration 
 of that term, provided the preliminary steps which the fpurth 
 section of the act requires to be taken by the patentee were 
 
134 EXTENSION OF TEEM: 
 
 complied witii before that term ended. See 2 & 3 Vict. c. 67. 
 (14 M. & W. 574; 14 L. J., Exch. 353; affirmed in Exck Ch.. 
 16 M. & W. 633 ; and in House of Lords, 1 E. L. Gas. 687.) 
 
 ((/) In re Smith's Patent. [1847] 
 
 An application for renewed letters patent, to combine tbe 
 substance of two patents, held by the petitioner, refused. (30 
 Lond. Jour. 451.) 
 
 (K) In re Porter's Patent. [1853] 
 
 Improvements effected upon the invention, for which the 
 original patent was granted, by the nephew of the applicant for 
 extension, were amalgamated with the original patent for the 
 extended term. ( Coryton's Law of Letters Patent, p. 217.) 
 
 (i) In re Heath's Patent. [1853] 
 
 Term of letters patent extended for seven years, in preference 
 to a shorter period, on the ground of there being lis pendens 
 respecting the validity of the patent, which would probably 
 delay the enjoyment of the term of extension. (8 Moo. P 0. C. 
 217 ; 2 Web. B. 247.) 
 
 (/) In j-e Bodmer's Patent. [1853] 
 
 Where letters patent comprised several subjects, one only of 
 which had been worked out, and this part of the patent was 
 affected by subsequent patented improvements by the same 
 patentee ; this portion of the patent only was extended, and the 
 grant was restricted to the unexpired term of the subsequent 
 patents. (8 Moo. P. C. C. 282.) 
 
 (Tc) In re Schlumberger's Patent. [1853] 
 
 Patentees applied under the statute 5 & 6 Will. 4, c. 83, for an 
 extension of the term of letters patent, and the Judicial Committee 
 recommended a prolongation for six years, which recommendation, 
 was confirmed by the Crown by an Order in Council, and a warrant 
 issued for sealing the letters patent. No step was taken by the 
 patentees to procure the sealing of the new letters patent, and, after 
 a delay of nearly three years, a party interested in opposing the 
 renewal petitioned the Crown to revoke the Order in Council and 
 the warrant to seal. It did not appear that the petitioner,, or the 
 public, had suffered any loss by the laches of the patentees. The 
 Judicial Committee, to whom the petition was referred, considered 
 the laches not of sufficient magnitude to deprive the patentees of 
 all benefit of the renewed patent; but made it a condition, before 
 dismissing the petition, that the patentees should pay the 
 petitioner a gross sum for costs and give an undertaking not to 
 prosecute for any infringement which might have occurred from 
 the date of the Order in Council to the date of dismissal of the 
 petition. (9 Moo. P. 0. G. 1.) 
 
Grant of Extension. 135 
 
 (Z) In re Honiball's Patent. [1855] 
 
 The statute 5 & 6 Will. 4, c. 83, s. 2, applied to confirmation of 
 letters patent for an extended term, as the grant of such extended 
 term is a grant of new letters patent, which are subject to the 
 same conditions, and open to the same objections, and entitled to 
 the same advantages as original letters patent. (9 Moo. P. G. C. 
 378 ; 2 Web. P. C. 201.) 
 
 (m) In re Betts' Patent. [1862] 
 
 The prolongation of a patent is, by 5 & 6 Will. 4, c. 86, and 
 16 & 17 Vict. c. 115, the same as a new grant. (1 Moo. P. G. G., 
 N. S.id; 9 Jur., N. S. 137 ; 11 W. B. 221 ; 1 L. T. Bep., N. S. 577.) 
 
 (n) In re Bovill's Patent. [1863] 
 
 Letters patent were granted in 1849 for a patent for England, 
 and in the year 1853 for Ireland and Scotland. Upon an application 
 for a prolongation of the three patents, it was objected that the 
 prior ■ use of the English patent rendered the Scotch and Irish 
 patents void. Such objection overruled, on the ground, that the 
 statute 15 and 16 Vict. c. 83, s. 18, providing for a single patent 
 for the United Kingdom, applied in the circumstances to this case, 
 and was not affected by the 53rd section of that act. (1 Moo. 
 P. G. a, N. S. 348.) 
 
 (o) BoviLL V. TiNCH. [1870] : 
 
 Three separate original letters patent were granted to the 
 inventor for England, Scotland and Ireland respectively. The 
 Scotch patent was void for want of novelty, and afterwards a 
 prolongation of the terms of the three original patents was granted 
 by one and the same letters patent under the great seal of the. 
 United Kingdom, pursuant to 15 & 16 Vict. c. 83 : — Held, that 
 the grant of prolongation was divisible, and operated as if there 
 had been separate grants by separate instruments for the three 
 countries, so that the prolongation of the English patent was not 
 rendered void by the invalidity of the Scotch patent. (39 L. J., 
 C. P., 277 ; L. B., 5 G. P. 623.) 
 
 (j>) In re Johnson's & Atkinson's Patents. [1873.] 
 
 Two cognate patents, having different terms to run, extended 
 so that both should expire on the same day. (L. B., 5 P. G. 87) 
 
 (2) Cocking's Patent. [1885] 
 
 Extension is granted in the form of a new patent for the pro- 
 longed term, so that section 22 of the Act of 1883 applies to it. 
 iGriff. 258 2 0. B. 151.) 
 
 (r) Smith's Patent. [1885] 
 
 Extension granted in the form of a new patent is subject to the 
 provisions of sect. 22 and sect. 27 of the Act of 1883. {Griff. 263, 
 2 0. B. 14.) 
 
136 EXTENSION OF TEEM : 
 
 Conditions imposed. 
 
 (s) In re Whitehouse's Patent. [1838] 
 
 The inventor, a mechanic, having assigned his interest to the 
 petitioner, his master, the Judicial Committee, under the circum- 
 stances, made it a condition to their recommendation to the Crown 
 to prolong the term of the patent, that the assignee of the patent 
 should secure the inventor an annuity during the period of 
 extension. (2 Moo. P. 0. C. 496; 1 Web. P. C. 473.) 
 
 (<) EussELL ». Ledsam. [1845 — 1848] 
 
 Renewed letters patent were granted to the plaintiff " upon Ms 
 securing to C. W. (the original inventor) an annuity of 500Z. so 
 long as the letters patent should last " ; — Seld, that the meaning 
 of this condition was, that a security should he given to C. W. for 
 the annuity, but that whether it was given before or after the 
 letters patent was immaterial; and that an averment, that the 
 annuity was at the date of the new letters patent secured, was 
 supported by proof of a deed to secure the annuity, executed 
 before the new letters patent were granted. (14 Jf. & W. 574: ; 
 affirmed in Exch. Ch., 16 M. & W, 633 ; and in House of Lords, 
 1 H. L. Gas. 687.) 
 
 (m) In re Bodmer's Patent. [1849] 
 
 Where the executor of the surviving assignee of a patentee 
 petitioned for an extension of the term of the letters patent, and 
 it was established that a valuable consideration had been given 
 for the assignment, and that the assignee had sustained consider- 
 able loss, the Judicial Committee, in granting an extension of the 
 term, refused to impose terms upon the petitioners in favour of 
 the patentee. (6 Moo. P. C. C. 468.) 
 
 Lord Brougham : " Terms are only imposed on the assignee 
 where the inventors and patentees have made nothing by their 
 invention." (I&. 469.) 
 
 (») In re Baxter's Patent. [1849] 
 
 Application for the extension of a patent for an improved 
 method of printing in colours. The petition was opposed by the 
 apprentices of the patentee, on the ground that they had served 
 their time with the petitioner under the expectation that, on the 
 expiration of the patent, they would be able to exercise the trade 
 themselves; and that they had not been properly taught any 
 other trade by the patentee, and, therefore, that they would be 
 unable to gain their livelihood : — Held, that, if this defence had 
 been founded in fact, the Judicial Committee would have put the 
 petitioner under terms ; but, as it was proved that the apprentices 
 had received such instruction as to enable them to get employment 
 in another branch of the trade, no condition was imposed on the 
 patentee. (3 Jur. 593.) 
 
Conditions Imposed. 137 
 
 (w) In re Hardy's Patent. [1849] 
 
 The inventor and patentee of improvements in manufacturing 
 iron axletrees for railway carriages had lost largely by the patent, 
 hut his assignees had lately made considerable profits, and from 
 their position in the trade, were likely to command a very large 
 sale of the patented article. The invention was of high merit, 
 and of great service to the public safety. In such circumstances, 
 a prolongation of the term was granted to the assignees for four 
 years, upon condition, first, that the assignees secured to the 
 patentee half the profits derived from the sale; and, secondly, 
 that the patented article should be sold by the assignees to the 
 public, at a certain fixed price. (6 Moo. P. G. G. 441 ; 13 Jur. 177.) 
 
 (x) In re Pettit Smith's Patent. [1850] 
 
 In granting prolongation, the Judicial Committee imposed a 
 condition, that the Commissioners for executing the office of High 
 Admiral should have the right of manufacturing such invention, 
 for the service of her Majesty, without any licence from the 
 patentee. (7 Moo. P. C. G. 133.) 
 
 (y} In re Bodmer's Patent. [1853] 
 
 Where letters patent (for improvements in machinery, tools or 
 apparatus for cutting, planing, turning, drilling, and rolling metals) 
 embraced several subjects, one only of which, namely, the rolling 
 of metals, had been worked out, and that part of the patent was 
 afiected by subsequent patented improvements by the same 
 patentee, and could not be effectually used without such subse- 
 quent improvements ; the Judicial Committee, before recommending 
 an extension of the term of the first patent, put the petitioner 
 upon terms of disclaiming all the parts of the original patent not 
 worked out, and restiicted the prolongation to the unexpired term 
 of the subsequent patents. (8 Moo. P. G. G. 282.) 
 
 (z) In re Schlumberger's Patent. [1853] 
 
 A patentee having ohtained an extension warrant neglected to 
 get the patent sealed. A subsequent petition to the Crown, by a 
 foreigner, to revoke this warrant was dismissed on condition of the 
 payment by the patentee of the petitioner's costs, and that no 
 action should be brought for any infringements between the date 
 of the warrant and the subsequent petition. (9 Moo. Pi G. G. 1.) 
 
 (a) In re Carpenter's Patent. [1854] 
 
 The Judicial Committee, in granting an extension of the patent, 
 which was extensively used in the Eoyal Navy, refused to annex 
 a condition allowing the Crown the use of the patent, for the 
 public service, without licence from the patentee. (2 Moo. P. G. G., 
 N. S. 191 (w.).) 
 
 (6) In re Normandy's Patent. [1865] 
 
 Patentee, formerly in partnership with J. & W., by a deed 
 of dissolution stipulated that J. & W. should have the exclusive 
 
138 EXTENSION OF TEEM. 
 
 right of granting, in certain cases there provided, licences for, 
 manufacturing the patent article. In recommending an extension 
 of the term of the letters patent, the Judicial Committee imposed 
 a condition upon the patentee to secure to J,, in whom the 
 interest under the deed of dissolution then vested, the same 
 interest in the new letters patent as related to the granting of 
 licences as was provided by the deed of dissolution, but refused 
 to allow J. to substitute new licences for those granted under 
 the original letters patent, in the event of the original licensees 
 declining to renew their licences from him under the new grant. 
 (9 Moo. P. a a 452.) 
 
 (c) In re Maekwick's Patent. [1860] 
 
 An extension granted to the assignee, upon condition of an 
 annuity being secured to the patentee. (13 Moo. P. G. G. 310.) 
 
 (d) In re Lancastee's Patent. [1864] 
 
 Patent for improvements in the manufacture of fire-arms. The 
 patentee had received large sums of money from government, for 
 expenses of experiments, and by way of bounty and reward, but 
 from the nature of the patent had not, in the opinion of the 
 Judicial Committee, received sufficient remuneration for his 
 invention, and in granting an extension, their Lordships refused 
 to impose a condition in the new grant, that the Crown should be 
 at liberty to use the invention for the public service without 
 licence from the patentee. (2 Moo. P. C. G., N. S. 189.) 
 
 (e) In re Mallet's Patent. [1866] 
 
 A patentee, who was not a manufacturer, granted a licence to a 
 manufacturing firm to manufacture the patented article, which, by 
 agreement between them, was of an almost exclusive character. 
 In granting a prolongation of the term of the letters patent, the 
 new letters patent were directed to be made upon condition that 
 licences should be granted by the patentee to the public upon 
 terms similar to the one already granted. (4 Moo. P. G. G., N. S. 
 176 ; L. B., 1 P. G. 308.) 
 
 (/) In re Herbert's Patent. [1867] 
 
 Petition for prolongation of term of letters patent by patentee, 
 together with the assignees of a moiety of the patent. After 
 the presentation of the petition, and before the hearing, the 
 patentee died, having by his will appointed his widow executrix 
 and residuary legatee. Extension granted to the assignees, on 
 condition that they held the moiety of the patent in trust for the 
 vndow of the patentee. (4 Moo. P. G. G., N. S. 300 ; L. B., 1 
 P. G. 399.) 
 
 (g) In re Pitman's Patent. [1871] 
 
 Sir J. W. Colvile, in delivering judgment, said : " It has been 
 the practice of this tribunal, in cases in which an application of 
 this kind (extension) on the part of the assignee has been granted, 
 
EXTENSION OF TEEM. 139 
 
 to impose conditions, whereby a proportion, at least, of tKe benefits 
 to be derived from the patent should go to the original inventor : 
 In re Bussell's Patent." {L. B., 4 P. C. 87.) 
 
 {h) In re Napier's Patent. [1881] 
 
 When a patent is prolonged, if the invention is likely to be used 
 by the government, it is usual to insert a condition that the 
 government and its contractors should be entitled to use the 
 invention. (6 App. G. 174.) 
 
 Procedure. 
 
 Patents Act, 1883, sect. 25. (6) It shall be lawful for Her Majesty in Council 
 to make, from time to time, rules of procedure and practice for regulating 
 proceedings on such petitions, and subject thereto such proceedings shall be 
 regulated according to the existing procedure and practice in patent matters 
 of the Judicial Committee. 
 
 For the existing rules, see ante, pp. 98, 99. 
 
 (i) In re Eeaed's Patent. [1835] 
 
 In all unopposed petitions for the extension of letters patent the 
 Attorney-General should attend on behalf of the Crown. (1 Web. 
 P. O. 557.) 
 
 (y) In re Woodcroft's Patent. [1840] 
 
 Unless parties opposing have distinct and separate interests, not 
 more than two counsel wiU be heard to oppose. C3 Moo. P. G. G. 
 172 (n.).) 
 
 {¥) In re Smith's Patent. [1850] 
 
 The Attorney-General represents the government and the public. 
 (7 Moo. P. C. G. 133.) 
 
 (l) In re Beidson's Patent. [1851] 
 
 Application, under 14 & 15 Vict. c. 99, s. 6, by parties who 
 opposed an extension, for production and inspection of the 
 petitioner's accounts previously to the hearing of the petition, 
 refused, with costs. (7 Moo. P. G. G. 499.) 
 
 (m) In re Hutchinson's Patent. [1861] 
 
 Eule 8 of the Privy Council, made pursuant to the statute, 
 6 & 6 Will. 4, 0. 83, relating to letters patent for inventions, 
 provides that a petition under sections 2 and 4 of that statute, 
 must be presented within one week from the insertion of the 
 last of the advertisements required to be published in the London, 
 Gazette. 
 
 A petitioner inserted the last advertisement of his intention to 
 petition for a prolongation on the 24th of May, but did not present 
 his petition until the 5th of June following. The registrar refused 
 to receive the petition as being too late. Upon a special application 
 for that purpose, it appearing that the delay arose from a mistake 
 
140 EXTENSION OF TEEM: 
 
 of the petitioner's agent, an order was made admitting the petition. 
 (14 Moo. P. C. a 364.) 
 
 («) In re Ball's Patent. [1879] 
 
 In the Privy Council the notice of objections is filed tinder the 
 6th rule of the Orders of the Privy Council, dated the 18th of 
 November, 1836, which requires parties served with the petition 
 to lodge at the Council Office, within a fortnight after such service, 
 notice of the grounds of their objections to the granting of the prayer 
 of the petition. This order is unaffected by the provision con- 
 tained in the 41st section of the 16 & 16 Vict. c. 83, and it is 
 sufficient under the rule to state the grounds of the objections 
 without stating the particulars of those objections. Consequently, 
 where the opponents state as one of their grounds of objection that 
 the patent has been anticipated, and give some instances of such 
 anticipation, evidence of other instances of anticipation not 
 mentioned in the objection may still be given in evidence. (L. B., 
 4 App. Gas. 171.) 
 
 (b) In re Newton's Patent. [1884] 
 
 Sub-s. (4) of sect. 25, does not alter the rules adopted by the 
 Judicial Committee, and it is still the duty of a patentee to produce 
 accounts of profi.ts received under foreign patents. (9 App. Cos. 
 592.) 
 
 {p) Yates & Kellett's Patent. [1887] 
 
 No accounts having been filed within the proper time, accounts 
 were subsequently filed which were insufficient in the details 
 given. The petitioners applied for an adjournment to amend, 
 but the Crown opposing, the adjournment was refused and the 
 petition dismissed. (3 T. L. B., 353 ; 4 0. JS. 150.) 
 
 Costs. 
 
 Patents Act, 1883, Sect. 25. (7) The costs of all parties of and incident 
 to such proceedings shall be in the discretion of the Judicial Committee; 
 and the orders of the Committee respecting costs shall be enforceable as if 
 they were' orders of a Division of the High Court of Justice. 
 
 (2) In re Westeupp & G-ibbin's Patent. [1836] 
 
 Lord Lyndhurst : " My opinion on the subject of costs is this : 
 if a party entitled to oppose does come and oppose, and opposes 
 successfully, if we do not give costs we shall discourage persons 
 coming to protect the interests of the public. We have the power 
 to give costs in any matter referred to us, and, sitting here as a 
 Judicial Committee, we can give costs under the general Act, not 
 under the Patent Act." (1 Web. P. C. 566.) 
 
 (r) In re Macintosh's Patent. [1837] 
 
 The Judicial Committee give costs of opposition when the 
 petitioner abandons his application for exteasion. (1 Web. P. G. 
 739.) 
 
Costs. 141 
 
 ■(/) In re Downton's Patent. [1839] 
 
 Costs -will be given to the petitioner where there is no ground 
 for the opposition. (1 Web. P. C. 567.) 
 
 (i) In re Muntz's Patent. [1846] 
 
 Where the petitioner had fairly and honestly stated his case, 
 both the things against and the things for him, in his petition, 
 and the inquiry had been prolonged by the opposition, the costs 
 of the opposition refused, although the petition had been dis- 
 missed on the ground of sufficient remuneration. (2 Web. P. 0. 
 122.) 
 
 (u) In re Bridson's Patent. [1852] 
 
 Costs given to all the opposers upon petitioners abandoning 
 petition before hearing. When the petition is abandoned, it is not 
 necessary that the opposers should serve the petitioners with notice 
 of their intended application to the court for costs of opposition, 
 (7 Moo. P. 0. a 499.) 
 
 (y) In re Hornby's Patent. [1853.] 
 
 On a petition for prolongation of letters patent, a day was fixed 
 for hearing. Objections were lodged against an extension. Before 
 the hearing the petitioners abandoned the prosecution of the 
 petition. In such circumstances costs of opposition allowed to 
 opposer. (7 Moo. P. G. 0. 503.) 
 
 (w) In re MiLifER's Patent. [1854.] 
 
 The Judicial Committee will exercise a discretion as to the 
 allowance of an opposer's c(jsts upon an abandoned petition for 
 extention of letters patent. 
 
 A gross sum allowed for costs of opposers, instead of referring 
 their costs to taxation. 
 
 An affidavit of merits by the petitioner upon the question of 
 ■costs, reiected, as no copy had been served upon the opposers. 
 (9 Moo. P. a a 39.) 
 
 (a;) 1« re Jones' Patent. [1854] 
 
 Where there were two opponents to an application for a pro- 
 longation of a patent upon substantially the same grounds of 
 objection, the Judicial Committee, upon a successful opposition, 
 allowed a gross sum for the costs of both parties. Opponents' 
 costs directed to be taxed at ]00Z., and divided between the 
 •opponents. (9 Moo. P. G. G. 41.) 
 
 (2/) In re Honiball's Patent. [1855] 
 
 The Eight Hon. Pemberton Leigh : " It is of great importance 
 that parties should not be discouraged from bringing important 
 facts to the knowledge of the Court by fear of the costs which they 
 may have to pay, even if their opposition be successful ; and upon 
 this ground, in Westrupp & Gibbins' Patent, the parties opposing 
 
142 FAILUEE OF CONSIDERATION. 
 
 were allowed their costs. But we are not satisfied with the manner 
 in which this opposition has been conducted. Much expense has 
 heen occasioned by relying upon patents for inventions which have 
 really no resemblance to this, and witnesses have been produced to 
 whose testimony, as we have already intimated, we cannot give 
 the smallest credit." No costs allowed to the opponents. (9 Moo. 
 P. a 0. 394.) 
 
 (z) In re Hills' Patent. [1863] 
 
 Upon the dismissal of a petition for prolongation, the Judicial 
 Committee, to avoid the expense of a formal taxation, allowed the 
 petitioner the option of paying a gross sum of 1,000Z. to the 
 opponents for the costs of their successful opposi tion ; such sum 
 to be apportioned by the Eegistrar of the Privy Council among the 
 several opponents, or in the alternative, dismissed the petition with 
 costs generally. (1 Moo. P. 0. C, N. S. 258.) 
 
 (a) In re Wibld's Patent. [1871] 
 
 When two sets of opponents really represent the same kind of 
 opposition, one set of costs, to be apportioned between them, will 
 be allowed, unless the petitioner should prefer to tax the costs of 
 all parties. (8 Moo. P. C. G., N. S. 300.) 
 
 Sir J. W. Col vile : " Their lordships have considered the question 
 of costs, and they are inclined to-adhere to the rule that has been 
 laid down, almost from the first application under the Act giving 
 them jurisdiction in patent oases, that in the exercise of their 
 power to grant costs it is certainly not desirable to refuse the costs 
 of a fair opposition, since it is rather in the interest of this tribunal 
 to encourage bond fide oppositions, in order that the Court may be 
 put into possession of all that can be alleged against the continuance 
 of the patent." {lb. 304.) 
 
 (6) In re Johsson's Patent. [1871] 
 
 Where there were several opponents; on dismissing the petition 
 a lump sTim was awarded the opponents, to be divided pro rata for 
 costs. (8 Moo. P. a a, N. S. 282.) 
 
 Morgan Brown's Patent. [1886] 
 
 The petition being withdrawn, costs were given to the opponents. 
 (3 0. B. 212.) 
 
 Failure of Consideration. See Grant, p. 149 («). 
 
 Fees. 
 
 Patents Act, 1883, sect. 24. (1.) There shall be paid in respect of the 
 several instruments described in the Second Schedule to this Act, the fees in 
 that schedule mentioned, and there shall likewise he paid, in respect of other 
 matters under this part of the Act, such fees as may he from time to time, 
 with the sanction of the Treasury, prescribed by the Board of Trade ; and 
 such fees shall be levied and paid to the aooount of Her Majesty's Exchequer 
 in such manner as the Treasury may from time to time direct. 
 
 (2.) The Board of Trade may from time to time, if they think fit, with the 
 consent of the Treasury, reduce any of those fees. 
 
FEES. 
 
 143 
 
 List of Fees payable on and in connection with Letters Patent. 
 Up to Sealing. 
 
 £ s. d. £ s. d. 
 
 1. On application for provisional protection . .10 
 
 2. On filing complete specification . . .300 
 
 4 
 
 3. On filing complete, specification with, first application . 
 
 4. On appeal from Comptroller to Law Officer. By appellant. 
 
 5. On notice of opposition to grant of patent. By opponent . 
 
 6. On hearing by Comptroller. By applicant and by opponent 
 
 respectively ........ 
 
 7. On application to amend specification : — 
 
 Up to sealing. By applicant ..... 
 
 8. After sealing. By patentee ..... 
 
 9. On notice of opposition to amendment. By opponent 
 
 10. On bearing by Comptroller. By applicant and by opponent 
 
 respectively ........ 
 
 11. On application to amend specification during action or pro- 
 
 ceeding. By patentee ...... 
 
 12. On application to the Board of Trade for a compulsory 
 
 licence. By person applying ..... 
 
 13. On opposition to grant of compulsory licence. By patentee . 
 
 14. On certificate of renewal : — 
 
 Before end of 4 years from date of patent 
 
 15. Before end of 7 years, or in the case of patents granted 
 under the " Patents, Designs, and Trade Marks Act, 1883," 
 before the end of 8 years from date of patent . 
 
 or in lieu of the fees of £50 and £100, the following annual 
 fees : — 
 
 16. Before the expiration of the 4th year from the date of the 
 
 patent 
 
 17. „ „ 5th 
 
 18. „ „ 6th 
 
 19. „ „ 7th 
 
 20. „ „ 8th 
 
 21. „ „ 9th 
 
 22. „ „ lOttx 
 
 23. „ „ 11th 
 
 24. „ „ 12th 
 
 25. „ „ 13th 
 On enlargement of time for payment of renewal fees : — 
 
 26. Not exceeding 1 month ...... 
 
 ■27. „ 2 months 
 
 28. „ 3 months ...... 
 
 29. For every entry of an assignment, transmission, agreement, 
 
 Koence, or extension of patent ..... 
 
 30. For duplicate of letters patent .... each 
 
 31. On notice to Comptroller of intended exhibition of a patent 
 
 under section 39 ...... . 
 
 32. Search or inspection fee each 
 
 33. For office copies every 100 words 
 
 (but never less than one shilling) 
 
 34. „ of drawings, cost according to agreement. 
 
 35. For certifying office copies MSS. or printed . . each 
 
 36. On request to Comptroller to correct a clerical error up to 
 
 sealing 
 „ „ „ after sealing 
 
 4 
 3 
 10 
 
 
 
 
 
 1 
 
 
 
 1 10 
 3 
 10 
 
 
 
 
 
 10 
 3 
 
 50 
 
 100 
 
 10 
 
 
 
 
 
 10 
 
 
 
 
 
 10 
 
 
 
 
 
 10 
 
 
 
 
 
 15 
 
 
 
 
 
 15 
 
 
 
 
 
 20 
 
 
 
 
 
 20 
 
 
 
 
 
 20 
 
 
 
 
 
 20 
 
 
 
 
 
 3 
 
 
 
 
 
 7 
 
 
 
 
 
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 £ 
 
 s. 
 
 d. 
 
 , 
 
 
 
 5 
 
 
 
 . 
 
 
 
 5 
 
 
 
 specification 
 
 
 
 
 . 
 
 2 
 
 
 
 
 
 plete specifi- 
 
 
 
 
 
 2 
 
 
 
 
 
 . 
 
 4 
 
 
 
 
 
 > 
 
 6 
 
 
 
 
 
 144 FIEST INVENTOE. 
 
 37. For certificate of Comptroller under section 96 
 
 38. For altering address in register 
 
 39. For enlargement of time for filing complete 
 
 not exceeding one month .. 
 
 40. For enlargement of time for acceptance of complete specifi- 
 
 cation — 
 
 Not exceeding one month . 
 „ two months 
 
 „ three months 
 
 First Inventor. See under Patentee, pp. 272 to 278. 
 
 Foreign Invention, 
 
 importer of, may obtain patent, pp. 144, 278 
 
 communicated, to be distinguished from what is new, p. 145 (Z). 
 
 Importer of Foreign Invention. 
 
 (d) Hastings' Patent. [1567] 
 
 A patent was granted to Mr, Hastings in consideration that he 
 brought in the skill of making frisadoes as they were made in 
 Harlem and Amsterdam, beyond the seas, being not used in 
 England. (Noy. B. 182 ; 1 Weh. P. C. 6.) 
 
 (e) Matthey's Patent. [Eliz.] 
 
 By patent was granted unto him the sole making of knives with 
 bone hafts and plates of lattin, because, as the patent suggested, he 
 brought the first use thereof from bevond seas. (Noy. iJ. 178 ; 
 1 Web. P. a 6.) 
 
 (f) Daucy v. Allin. [160,2] 
 
 When any man doth bring any new trade into the realm or any 
 engine tending to the furtherance of a trade that never was used 
 before the king may grant him a monopoly patent. (Noy. B. 182, 
 1 Web. P. a 6.) 
 
 (g) Edgeberey v. Stephens. [1691] 
 
 If an invention be new in England, a patent may be granted, 
 though the thing was practised beyond sea before, for the Statute 
 21 Jac. 1, speaks of new manufactures within this realm, so that if 
 it be new here it is within the Statute. (2 Salic. 447 ; Comb. 84 ; 
 Dav. P. a 36 ; 1 Web. P. C. 35.). 
 
 Qi) Nickels v. Eoss. [1841] 
 
 A party availing himself of information from abroad is an 
 inventor within 21 Jac. 1 ch. 3, sect. 6. (8 G. B. 679.) 
 
 (j) Walton v. Bateman. [1842] 
 
 The party obtaining the patent must be the true and first inventor 
 in this country. If he import from a foreign countiy that which 
 others at the time of the making of such letters patent and grants 
 did not use it will sufBce. (1 Web. P. G. 615.) 
 
FOEFEITUKE. 145 
 
 (J) Stead v. Williams. [1844] 
 
 If tlie patentee derived his information from a foreign country, 
 that ■would still leave him the true and first inventor in this 
 country, provided he did not derive his information from any 
 person here. (See under Novelty, p. 245 (g)), (13 L. J. 0. P. 220.) 
 
 (F) In re Lameneaudb's Patent. [1850] 
 
 Lord Brougham: "I am not aware that it has been held to 
 negative the right of an importer of a foreign invention that a 
 hook had stated it before." (2 Web. P. C. 169.) 
 
 (I) Eenaed v. Levinstein. [1864] 
 
 Semble : It is incumbent on a patentee to distinguish that part 
 of an invention which is communicated from abroad from that 
 which is new. (10 L. T., N. S., 177.) 
 
 Foreign Vessels, use of patented article in, Patents Act, 1883, sect. 43, 
 p. 145. 
 
 Sect. 43. (1.) A patent shall not prevent the use of an invention for the 
 purposes of the navigation of a fiireign vessel within the jurisdiction of any of 
 Her Majesty's Courts in the United Kingdoiji, or Isle of Man, or the use of an 
 invention in a foreign vessel within that jurisdiction, provided it is not used 
 therein for or in connection with the manufacture or preparation of anything 
 intended to be sold in or exported from the United Kingdom or Isle of Man. 
 
 (2.) But this section shall not extend to vessels of any forei^in state of 
 which the laws authorise subjects of such foreign state, having patents or 
 like privileges for the exclusive use or exercise of inventions within its 
 territories, to prevent or interfere with the use of such inventions in British 
 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 or preparation of anything intended to be sold in or exported 
 from the territories of such foreign state. 
 
 (m) Caldwell v. Vanvlissengen. 
 
 Tormerly the use of an invention, patented in ^ the United 
 Kingdom, for the purposes of navigation of a foreign vessel, was 
 prevented within the jurisdiction. (16 Jur. 115; 21 L. J., Ch. 97.) 
 
 Foreigner. 
 
 may apply for patent. Patents Act, 1883, sect. 4, (1), p. 145 
 liable in this country for infringement, p. 287 (q) 
 trustee of, may obtain patent, p. 145 (n) 
 and petition for extension, p. 102 (s). 
 Patents Act, 1883. Sect. 4. (1.) Any person, whether a British 
 subject or not, may make an apjJication for a patent. 
 
 (n) Beard ». Egeeton. [1846] 
 
 A patent granted to a British subject in his own name for 
 an invention communicated to him by a foreigner was not void, 
 although in truth taken out and held by the grantee in trust for 
 the foreigner. (3 C. B. 97.) 
 
 Forfeiture for non-payment of prescribed fees within prescribed times. 
 Patents Act, 1883, sec. 17, p. 559. 
 
146 
 
 FOEMS. 
 
 Forms. 
 
 of application prescribed by Patents Act, 1883, sect. 5, (1), p. 14S 
 
 of provisional specification, p. 147 
 
 of complete specification, p. 147 
 
 of patent, permitttd by Patents Act, 1883, sect. 33, p. 270. 
 
 Patents Act, 1883. Sect. 5. (1.) A.n application for a patent must be 
 made in the form set forth in the First Schedule to this Act, or in such other 
 form as may be from time to time prescribed ; and must be left at or sent by 
 post, to the Patent OiBce in the prescribed manner. 
 
 [For the remainder of the section, see p. 34.] ■ 
 
 Sect. 33. Every patent may be in the form in the first schedule to this 
 Act, and shall be grantid for one inveniion only, but may contain more than 
 one claim; but it shall nor be competent for any person in an aciioii or other 
 proceedina; to take any objection to a patent on the ground that it comprises 
 more than one invention. 
 
 Patent Rules, 1890, 5. The Forms A, B, and C in the First Schedule 
 to the Act of 1883 shall be altered or amended by the substitution therefor 
 respectively of the Forms A, Al, A2, B, and C in the Second Schedule to 
 tbese Rules. 
 
 [The followring Forms A, B, C, are those which are set forth in the 
 Statute ; they are inserted here only for the sake of their bearing on the 
 interpretation of the Statute. The prescribed forms, virhich are slightly 
 different, must be used by applicants. They are set out in the Second 
 Schedule to the Rules of 1890, and may be obtained at the Patent Office.] 
 
 THE FIRST SCHEDULE. 
 
 'yection 5. 
 
 (a) Here insert 
 name, address 
 ' and calling of 
 inventoi". 
 ((») Here insert 
 title of inven- 
 tion. 
 
 (p) Signatnre 
 of inventor. 
 
 (d) Signature 
 a^i title of the 
 oflBcer before 
 whom the 
 (leclaration is 
 made, 
 
 FoKM OF Application, &c. 
 FORM A. 
 
 Form of Application for Patent. 
 
 I, (a) John Smith, oi 29, Perry Street, Birmingham, ,m the 
 county of War^ivick, Jingineer, do solemnly and sincerely declare 
 tbat I am in possession of an invention for (b) "Improvements 
 in Sewing Machines" ; that I am the true and first inventor 
 thereof; and that the same is not in use by any other person or 
 persons to the best of my knowledge and belief; and I humbly 
 pray that a patent may be granted to me for the said invention. 
 
 And I make the above solemn declaration conscientiously 
 believing the same to be true, and by virtue of the provisions 
 of the Statutory Declnrations Act, 1835. 
 
 (c) John Smith. 
 
 Declared at Birmingham, in the county of Warwick, this 
 
 day of 
 
 18 
 
 Before me, ; 
 
 (rf) James Adams, 
 
 Justice of the Peace. 
 
 Note. — Where the above declaration is made out of the United 
 Kingdciiii, the words " and by virtue of the Statutory Declarations 
 Act, 1835," must be omitted ; and the declaration must be made 
 before a British consular officer, or where it is not reasonably 
 practicable to make it before such officer, then before a public officer, 
 duly authorised in that behalf. 
 
FORMS. 
 
 147 
 
 FORM B. 
 
 (a) Here insert 
 title as in 
 declaration. 
 (6) Here insert 
 name, address, 
 and calling of 
 inventor us in 
 declaration. 
 
 (c) Here insert 
 sbort descrip- 
 tion ot inven- 
 tion. 
 
 (d) Sifmalnre 
 of inventor. 
 
 Form of Provisional Specification. 
 
 Improvements in Sewing Machines, (a) 
 
 I, (6) John Sinith., of 29, ferry Street^ Birmingham^ iu the 
 
 county of Warwick, Engineer, do hereby declare the nature o,f 
 
 my iuyention for " Improvements in Sewing Machines," to be as 
 
 follows (c) :— 
 
 ***** 
 
 (d) John Smith. 
 
 Dated this day of 18 . 
 
 Note. — No stamp is required on this document. 
 
 (a) Here insert 
 title, as in 
 declaration. 
 (&) Here insert 
 name, address, 
 and calling of 
 inventor, as ia 
 declaration. 
 
 (c) Here insert 
 full description 
 of invention. 
 
 (cE) Here state 
 distinctly the 
 features of 
 novelty 
 claijned. 
 
 (e) Signature 
 of inventor. 
 
 FORM c, 
 
 PoBM OF Complete Specification. 
 Improvements m Sewing Machines, (a) 
 
 I, (6) John Smith, of 29, Perry Street, Birmingham, in the 
 
 county of Warwick, Engineer, do iiereby declare the nature of 
 
 my inventiou for " Improvements in Sewing Machines," and in 
 
 what manner the same is to be ]ierformed, to be particularly 
 
 described and ascertained in and by the following statement (c) : 
 * * * * * ^ "^ 
 
 Having now larticutarly described and ascertained the nature 
 of my said invention and in what manner the same is to be per- 
 formed, I declare that what I claim is (d) : 
 
 1. 
 
 2. 
 
 3. (fee. 
 
 (e) John Smith. 
 
 Dated this day of 18 . 
 
 For form ot patent, see under patent, p. 270. 
 
 The following' additional forms are bet out in the second schedule to tlie 
 Patent Rules of 1890: — A. Application for Patent. A. 1. Application for 
 Patent for Inventions communicated from abroad. A. 2. Application for 
 Patent under International and Colonial Arrangements. B. Piovisional 
 Specification. 0. Complete. D. Opposition to Grant of Patent. B. Appli- 
 cation for Hearing by Comptroller. F. Application to amend Specification or 
 Drawings. Gr. Opposition to amendment ot Specification or Drawings. H. 
 Application for Compulsory Grant of Licence, fl. 1. Petition for Compt;lsory 
 Grant of Licences. I. Opposition to Compulsory Grant of Licence. J. 
 Application for Certificate of Payment or Renewal. K. Application for 
 Enlargement of Time for Payment of Renewal Fee. L. Request to enter 
 Name upon the Register of Patents. M. Request to enter Notification of 
 Licence in Register. N. Application for Duplicate of Letters Patent. O. 
 Notice of Intended Exhitiition of Unpatented Invention. P. Request I'or 
 Correction of Clerical Error. Q. Certificate of Comptroller. R. Notice for 
 Alteration of an Address in Register. S. Application for Entry of Order 
 of Privy Council in Register. T. Appeal to Law Officer. U. Application 
 for Extension of Time for leaving Complete Specification. V. Application 
 -for Extension of Time for Acceptance. 
 
 L 2 
 
148 FEAUD. 
 
 Fraud, 
 
 on the Crown, p. 564 (w) 
 
 public user obtained by, p. 41 (r) 
 
 purchase money for patent obtained by, recovered, p. 67 (i) 
 
 in passing oft' goods, p. 148 (o) 
 
 in obtaining patent in breach of confidence, p. 84. 
 
 (o) Laweie v. Bakee. [1885] 
 
 In an action for infringement and for an injunction to re- 
 strain the defendant from fraudulently passing off his goods as 
 the plaintiffs : — Held, that there was no infringement, but that 
 as the defendant had sold cups for birdcages as " patent cups," 
 knowing that the trade understood that to mean the plaintiff's cup, 
 lie had fraudulently passed off his goods as the plaintiff's, and must 
 be restrained. (2 0. It. 213.) 
 
 Grant of Letters Patent. 
 
 Patents Act, 1883, sect. 12, p. 148. 
 
 The Date of, 
 to be date of application, sect. 13, p. 80 
 hiiw reckoned, pp. 58 (i/), 59 (V) 
 of rival patents, p. 81 (r). 
 
 Conditions and Terms of, 
 to siipplv her Miijc^sty's service, p. 148 {p) 
 to grant licences, p. 149 {q) 
 to assign, p. 149 {q), (r) 
 in cases of joint inventors, p. 149 (r). 
 
 Consideration for, p. 149. 
 
 Limited, p. 150. 
 
 Cancelling, p. 151. 
 
 Patents Act, 1883. Sect. 12. (1.) If there is no opposition, or, in case of 
 opposition, if the determination is in favour of the grant of a patent, the 
 comptroller shall cause a patent to be sc aled with the seal of the patent 
 officf. 
 
 (2.) A patent so sealed .shall have the same effect as if it were sealed with 
 the Great Seal of the United Kingdom. 
 
 (3.) A patent shall be senled as soon as may be, and not after the expiration 
 of fifteen months from the date of Hpplication, except in the cases hereinafter 
 mentioned, that is to say — 
 
 (a.) Where the sealing is delayed by an appeal to the law officer, or by 
 opposition to the firant of the patent, the patent may be sealed at 
 such time as the law .officer may direct. 
 (J.) If the person making the application dies before the expiration of 
 the fifteen Inonths aloresald, the patent may be granted to his legal 
 representative and sealt d at any time within twelve months after the 
 death of the applicant. 
 
 Conditio^ and Terms of Grant. 
 (p) Ex parte Vwim. [1836] 
 
 A patent for the exclusive use of an improvement in the 
 invention of anchors, contained a proviso for avoiding the patent, 
 if the patentee should not supply for Ms Majesty's service all 
 
UEANT OF LETTEES PATENT. 149 
 
 sucli articles of the invention as should be required, on such 
 reasonable terms as should be settled by the Lords of the 
 Admiralty. The latter used the invention, but did not take tlie 
 articles from the patentee. The Court refused to issue a mandamus 
 to them, to settle the terms according to the patent. (4 A. & E. 
 949 ; 6 N.d M. 472.) 
 
 (g) In re Daine's Patent. [1856] 
 
 B. had obtained letters patent at the cost of D., which had 
 been at D.'s request assigned to H. Subsequently D. applied for 
 the grant of letters patent for an improvement in B.'s process. 
 The Lord Chancellor being satisfied that D. had arrived at his 
 knowledge on the improvement whilst working B.'s patent, 
 ordered the patent to be sealed on certain terms as to assignment 
 and licence to H. if he required them. (26 L. J., Ch. 298.) 
 
 (/•) In re Eussell's Patent. [1857] 
 
 Where it appeared that a master and his foreman had both 
 invented certain improvements, for which the master sought 
 letters patent : — KeU, that they ought only to be granted on the 
 terms of their being vested in trustees for the master and the 
 foreman. (2 Be G. & J. 130.) 
 
 («) Feather v. The Queen. [1865] 
 
 The Crown might formerly use a patented invention without 
 the assent or remuneration of the patentee. If the law were 
 otherwise, the remedy of the patentee would not be by petition 
 of right, but by action against the officers of the Crown using the 
 patented invention. (6 B. & S. 257.) But now see Patents Act, 
 1883, sect. 27, p. 79. 
 
 («) Dixon v. London Small Arms Co. [1877] 
 
 Feather v. The Queen was rightly decided, but the principle 
 was one which ought not to be extended. (L. B. 1 App. G. 632.) 
 But now see Patents Act, 1883, sect. 27, p. 79. 
 
 Consideration for Grant. 
 
 (u) E. V. MussARY. [1738] 
 
 Failure of consideration is a ground for avoiding the grant. 
 (Bull. N.P.lGa; 1 Weh. P. C. 41.) 
 
 (») Jessop's Case. [Before 1795] 
 
 Where letters patent were taken out for a watch, and the in- 
 vention was only of a part of a watch, they were held void for 
 false suggestion. (2 H. Bl. 490 ; 1 Weh. P. G. 42, w.) 
 
 (w) Brunton v. Hawkes. [1821] 
 
 Abbott, C.J. : " It is quite clear that a patent granted by the 
 Crown cannot extend beyond the consideration of the patent. 
 The King could not, in consideration of a new invention in one* 
 
150 GEANT. 
 
 article, grant a patent for that article and another." (4 B. & Aid., 
 651.) Bayley, J. : " If a patent is taken out for many different 
 things, the entire discovery of all those things is the consideration 
 upon which the King is induced to make the grant. That con-, 
 sideration is entire, and if it fails in any part it fails in toto. Upon 
 au application for a patent, although the thing may be new in 
 every particular, it is in the judgment of the Crown, whether it 
 will or will not, as a matter of favour, make the grant to the 
 person who has made the discovery. And when an application is 
 made for a patent, for three different things, it may be considered 
 by the persons who are to advise the Crown as to the propriety 
 of the grant, that the discovery as to the three things together 
 may form the proper subject of a patent although each, per se, 
 would not induce them to recommend the grant." (lb. 552.) 
 
 (a;) Feather v. The Queen. [1865] 
 
 A patent is not based upon a contract between the patentee, 
 and the Crown, in which the patentee, by communicating the 
 secret of the invention to the public, gives a valuable consideration 
 for the grant ; but is simply an exercise of the roj'al prerogative. 
 (6 £. & S. 285.) 
 
 (]/) Patterson v. Gas Light and Coke Company. [1877] 
 
 The Board of Trade under the City of London Gas Act, 
 appointed three gas referees, whose duties were to inspect the 
 works of the gas companies, with the view of ascertaining the 
 means adopted therein for purifying gas, and to test the gas and 
 prescribe the maximum of impurity to be allowed. The companies 
 were required by the Act to give to the referees all facilities for 
 the performance of their duties. The referees made experiments 
 at the respondents' works, with a view to improvements in the 
 purification of gas, and, in January, 1872, drew up a report 
 thereon, which, three months afterwards, they submitted to the 
 Board of Trade. Shortly before the report was submitted, one of 
 the referees took out a patent for improvements, the prkioiple 
 of which had been indicated in the report. Held, that the contents 
 were public property, so that there was no consideration for the 
 patent. (L. B., 2 Ch. 1). 812. Affirmed in H. L., L. B., 3 App. 
 Gas. 23i).) 
 
 Limited Grant. 
 (z) ,Ba;^arie Bates AND Eedgate. Ch. [1869] 
 
 Where a provisional specification is filed, but, pending the 
 six months' provisional protection, and befoie obtaining letters 
 patent, a second inventor files a provisional specification, and 
 obtains letters patent for an invention, partly covered by the 
 first provisional specification, letters patent will not, in the 
 absence of fraud, be gi anted to the first applicant, for any part, 
 of his invention which is covered by the letters patent already 
 obtained by the second applicant. (L. B., 4 Ch. 677 ; 38 L. J., 
 Ch. 601.) 
 
IMPEOVEMENTS. 151 
 
 Cancelling, 
 (a) R. V. Newton. [1845] 
 
 This was an application heard before the Lord Chancellor, 
 assisted by the Miister of the Uolls, to compel the defendant to 
 bring into court a certain patent, to have the same cancelled, ami 
 the seal cut therefrom. It appeared that the patent had been 
 obtained by the defendant for a foreigner resident abroad, and 
 that he had. forwarded the patent to him. It was ordered that 
 the enrolment of the patent should be cancelled ; and, that a 
 vocator should be entered on the roll ; and, that the defendant 
 should undertake to bring no writ of error, or make any assign- 
 ment of the patent. (26 Lon. Jour., C. S. 361.) 
 
 Grantee, see Patentee. 
 
 Great Seal. 
 
 A patent sealed with the Seal of the Patent Office is, by Patents Act, 1883, 
 sec. 12, to have the same effect as if it was sealed with the Great Seal of the 
 United Kingdom. (See p. 148.) 
 
 Ignorance is no answer to action for infringement, pp. 202, 203 
 of previous invention, when wilful on part of patentee, p. 151 (6). 
 
 (6) In re Honiball's Patent. [1855] 
 
 According to the doctrine laid down by Lord Lyndhurst in 
 Westrupp and Gibbin's patent, a party cannot be permitted to 
 shelter himself under wilful ignorance, but must be fixed with 
 knowledge not only of what he did know, but of that which he 
 would have knovni if he had made the inquiries which it was 
 incumbent upon hiui to make. (9 Moo. P. G. G. 378 ; 2 Web. P. G. 
 201.) 
 
 Illegality of Invention will invahdate patent, 21 Jao. I. ch. 3, sect. 6, 
 p. 491 
 is ground for refusal of grant. Patents Act, 1883, sect. 86, p. 396. 
 
 Illustrated Journal. 
 
 Patents Act, 1883, sec. 40. (1.) , The comptroller shall cause to be 
 issued periodically an illustrated journal of patented inven ions, as wtll as 
 reports of patent cases decided by courts of law, and any other information 
 that the comptroller may deem generally useful or important. 
 
 (2.) Provision shall be made by the comptroller for iieeping on sale copies 
 of such journal, and also of all complete specifications of patents for the time 
 being in force, with their accompanying drawings, if any. 
 
 Importation and Sale, infringement by, p. 151 («). 
 
 (c) Elmslie v. BoUEStER. 
 
 The importation into this country and sale here of goods manu- 
 factured abroad, by a process patented in this country, is an 
 infringement of the patent. (39 L. J. Ch. 328 ; L. B. 9 Eq. 217.) 
 
 Importer. See under Foreign Invention, p. 144. 
 
 Improvements, 
 
 on processes, patents for, pp. 496 Q), 499 (t), 513 (/) , , ■ 
 
 specifications of inventions for, p, 445, seq. 
 
152 IMPEOVEMENTS. 
 
 and discovery defined, pp. 224 (e), 230 (z) 
 
 made before filing specification, pp. 440 (g), (r), 457 (z) 
 
 discovery of, effect on specification, pp. 481 (m), 497 (n) 
 
 on combination, pp. 501 (d), 504 (/') 
 
 value of, question lor the jury, p. 576 (s). 
 
 Index. 
 
 Patents Act, 1883, 40, (3.) The comptroller shall continue, in such form 
 as he may deem expedient, the indexes and abridgments of specifications 
 hitherto published, and shall from time to time prepare and publish such 
 other indexes, abridgments of specifications, catalogues, and other works 
 relating to inventions, as he may see fit. 
 
 Industrial Exhibition. See Exhibition, p. 93. 
 
 Infant. Declaration by. See Patents Act, 1883, sect. 99, p. 81. 
 
 Infringement, 
 
 Oenerally — 
 if committed before publication of complete specification, not actionable, 
 
 Patents Act, 1883, sect. 13, p. 153 
 proceedings for, not to be commenced until grant, sect. 15, p. 153 
 
 taken after failure to make payment, sect. 17 (4), p. 154 
 meaning of, p. 154 {d), (e), (h) 
 
 in determining, validity of patent assumed, pp. 154 (/), 155 (i) 
 use of invention between expiry and renewal of patent is no, p. 154 (jr) 
 where specification larger than patent, p. 154 (») 
 relation to prior user, pp. 154 (/), 182 (/), 226 (/), 227 (p) 
 effect of Act of Parliament on action for, p. 155 (I) 
 sale of patent, article carries with it right to use, imless limited by 
 
 agreement, pp. 155 (m), 214 (d) 
 by concurrent applicants for patents, p. 155 (n) 
 assistance in, pp. 154 (c), 165 («), 345 (a) 
 intention immaterial, pp. 202, 203 
 a question for the jury, pp. 203, 204. 
 
 By working or making — 
 on principle and method of patent, p. 156 (t) 
 though varying in minor details, p. 156 (i) 
 in imitation of a prior machine made on same principle but different 
 
 construction, p. 156 (t) 
 for amusement, p. 156 (t) 
 as a model, p. 156 (t) 
 as an experiment, pp. 157 (w), 160 (e) 
 where invention is useful though never in use, p. 156 (u) 
 by foreigner while in England, p. 157 (x) 
 by contemporaneous inventors, p. 157 (y) 
 an improvement on a prior patent, p. 159 (z) 
 on board British ship on high seas, p. 159 (b) 
 by user in England in transitu, p. 160 (dl) 
 by government, p. 149 (s) 
 
 contractors for, p. 169 (v) 
 by an agent, pp. 157 (v), 165 (u) 
 for exportation, p. 160 (c) 
 
 by adaptation of patented combination to additional purpose, p. 179 (a) 
 by custom house agents, p. 162 (Ii) 
 
INFEINGEMENT. 153 
 
 by allowing pupils to experiment on, p. 163 (i) 
 by storing dismantled articles, p. 162 (i) 
 by using for different purpose, p. 163 (/). 
 
 By vending — 
 
 exposure for sale, p. 163 (k) 
 
 though, no sale effected, p. 164 (p) 
 making for sale, witbout exposure, p. 163 (to) 
 
 not for sale, p. 163 (n) 
 iniportation and sale, pp. 164 (o), 164 (r), 170 (aj) 
 buying and selling in the way of trade, p. 164 (s), 165 (t) 
 for private use, p. 165 (t) 
 of patent article made under licence, p. 164 (g) 
 presumption tbat offer to sell means to sell what does not infringe, 
 
 p. 171 (b) 
 onus is on plaintiff to prove that articles sold were manufactured accord- 
 ing to patented process, p. 171 (a) 
 lending but refusing to sell, p. 170 (z). 
 
 £y working or making a new and material part of an Invention — 
 
 where part used is not applied to same, or analogous purpose, pp. 173 (i), 
 174 (A), (»), 176 (?), (0 
 
 employed in same manner, p. 176 (r) 
 patentable, pp. 175 (p), 177 (y) 
 does not create a complete machine, p. 176 (s) 
 is one of several improvements, pp. 172 (d), 173 (h) 
 is proved not new and material, pp. 160 (c), 174 (k), 177 («) 
 advantage of part used is collateral to the object of the invention, 
 p. 177 (y) 
 by imitation, pp. 173 (/), 176 (g) 
 
 meaning of " new and material part," pp. 175 (o), 180 (d) 
 must be a part which could stand by itself in respect of invention, 
 p. 177 (x). 
 
 Colourable Imitation — Equivalent — Evasion — 
 in form or immaterial circumstances, pp. 156 (f), 183 (m), (n), 185 (u),(w) 
 which is also an improvement, pp. 185 (x), 186 (z), (/), 189 (i), (/) 
 of a chemical process, pp. 188 Qi), 189 (y), 192 (V) 
 though too clumsy to have anticipated plaintiff's invention, p. 192 (o) 
 when equivalent discovered subsequent to patent, pp. 188 {g\ 189 (/) 
 a different mode of or combination for attaining same result, is not, 
 pp. 184 (0, 187 (e), 192 (m), (ra) 
 
 unless apphcation of principle is claimed, pp. 156 (f), 184 (o), (j), (f), (s), 
 185 {v). 
 
 Generally. 
 
 Patents Act, 1883, sect. 13. Every patent shall be dated and sealed as 
 of the day of the application : provided that no proceedings shall be taken in 
 respect of an infringement committed before the publication of the complete 
 specification : Provided also, that in case of more than one application for a 
 patent for the same invention, the sealing of a patent on one of those appli- 
 cations shall not prevent the sealing of a patent on an earlier application. 
 
 15. After the acceptance of a complete specification and until the date of 
 sealing a patent in respect thereof, or the expiration of the time for sealing, 
 the applicant shall have the like privileges and rights as if a patent for the 
 invention had been sealed on the date of the acceptance of the complete 
 specification : Provided that an applicant shall not be entitled to institute 
 any proceeding for infringement unless and until a patent for the invention 
 has been granted to him. 
 
154 INFEINGEMENT. 
 
 17 (4) (b). If any proceeding shall be taken in rrspcct of an infringement 
 of the patent committed after a failure to make any payment within the 
 prescribed time, and before the enlargement thereof, the Court before which 
 the proceeding is proposed to be taken may, if it shall think fit, refuse to 
 award or give any damages in respect of such infringement. 
 
 [For the remainder of the section, see p. 559.] 
 
 (c) Bancroft v. Warden. Ch. [1773] 
 
 Demurrer to a bill stating that defendants imported barks and 
 sold them to dyers, who used them in infringement of the plaintiif' s 
 patent, overruled. (Bomilly's Notes to Gases, 103.) 
 
 (fJ) Galloway ». Bleaden. N. P. [1839] 
 
 Tindal, C.J. : An infringement is " a copy made after and 
 agreeing with the principle laid down in the patent." (1 Weh. 
 P. a 623.) 
 
 (e) Walton v. Bateman. N. P. [1-842] 
 
 The doing any of the acts specified in the prohibitory clauses of 
 the letters patent; is an infringement. (1 Web. P. G. 616.) 
 
 (/) MuNTZ V. Foster. N. P. [1844] 
 
 Tindal, C.J., told the jury, that, " for the purpose of inquiring 
 whether the defendants have infringed the patent or not, we are to 
 assume that it is a good patent, that no objection arises either to 
 the nature of the grant or the specification, which has been enrolled 
 by the plaintiff." (2 Web. P. G. 99.) 
 
 (gr) EussELL V. Ledsam. Ex. Ch. [1845] 
 
 Parties who use an invention, letters patent for which have 
 .expired, before such letters patent have been renewed, are not 
 guilty of infringement. (14 M. & W. 674; afSrmed in Exch. Ch., 
 16 M. & W. 641.) 
 
 (A) Stead v. Anderson. [1847] 
 
 . To prove infringement, it must be shown, that there is a sub- 
 stantial resemblance to the plaintiff's invention, in particulars to 
 ■which his exclusive right extends. (2 Web. P. G. 156.) 
 
 (i) Cbowl v. Edge. [1850] 
 
 Where the enrolled specification of a patent was not identical 
 with the invention for which the patent had been granted, but of 
 a more extensive nature, in an action on the case for infringing 
 the plaintiff's patent in a particular not included in the patent 
 but in the specification, a verdict for the defendant was held 
 right, and the rule for a new trial discharged. (39 L. 0. 443; 
 M. Dig. 194.) 
 
 (/) Caldwell v. Vanvlissengen. Ch. [1861] 
 
 Turner, V.-C, in the course of his judgment, said : " What 
 previous user will invalidate a patent, and what user (if any) can 
 be permitted in contravention of the patent right, are different 
 
INFEINGEMEHT. 155 
 
 questions, depending on wholly different considerations ; tlie 
 one upon the extent of previous knowledge, the other upon the 
 effect of the grant. (9 Hare, 428.) 
 
 (h) Unwin v. Heath. H. L. [1855] 
 
 Crowder, J. : " For the purpose of considering the question of 
 infringement, the invention must be assumed to be new, and well 
 described in the specification." (25 L.J., G. P. 10.) 
 
 (I) In re Bakewell's Patent. [1862] 
 
 This was an application by the patentee for a prolongation 
 of the term of letters patent. Lord Chelmsford, in delivering 
 judgment, said : " There was a patent granted to Mr. Bonelli, 
 which the petitioner asserts to have been an infringement of his 
 patent. Mr. Bonelli, it appears, has obtained a private Act of 
 Parliament, incorporating a company, which has been established 
 for the purpose of carrying out his invention. Their Lordships 
 do not mean to say that this private Act of Parliament would be 
 actually a bar to any proceedings on the part of Mr. Bakewell, 
 supposing the term of the patent were enlarged, for an infringement 
 of the patent by Bonelli, but it certainly would interpose very 
 considerable difficulty in the way of such action, and I am not at 
 all aware of any such action in which a party has obtained a 
 verdict for the infringement of a patent where the party pro- 
 ceeded against has been working that which is said to be an 
 infringement under the authority of an Act of Parliament." (15 
 Moo. P. a a 388.) 
 
 (ni) Betts v. Willmott. Ch. [1871] 
 
 Where a patentee in England has an agency abroad, the sale of 
 the article patented, either abroad or in this country, carries with 
 it the right to use it everywhere, unless such use has been limited 
 by agreement, (i. B., 6 GJi. 239.) 
 
 (m) Saxby v. Hennett. [1873] 
 
 Two patents for the same inventions were applied for on the 
 20th and 23rd July, 1867, respectively. The patent applied for 
 on the 23rd July was sealed before that applied for on the 20th 
 July, but each patent was dated as of the day of application : — 
 Held, that, under the 15 & 16 Vict. c. 83, s. 24, the patents took 
 effect as upon the days on which they were applied for respec- 
 tively, and therefore acts done by virtue of the patent applied for 
 on the 23rd July were infringe inents of the patent applied for on 
 the 20th July. (i. Sep., 8 Ex. 210; 42 L. J., Ex. 137 ; 28 L. T. 
 Bep., N. S. 639.) 
 
 ;(p) Clark v. Adie (First App.). H. L- [1877] 
 
 A patent for a combination may be infringed in three ways : 
 
 (1) By using the whole combination. 
 
 (2) By using in substance the pith and marrow of the 
 
156 mrRINGEMENT : 
 
 invention, omitting part to give colour to that 
 adopted. 
 (3) By using a subordinate integer, wliicli is itself a minor 
 invention, but in this case the specification must make 
 it plain that the patentee intended to claim such sub- 
 I ordinate integer, (L. B., 2 App. Gas. 315.) 
 
 (g) Richardson v. Castrey. [1887] 
 
 The patent was for an apparatus to be used in manufacturing 
 wine glasses, and was held to be for a particular combination, and 
 as the defendants had not used this combination they were held 
 not to have infringed. (4 0. B. 265.) 
 
 (r) BiDDELL V. ViCKERS. [1888] 
 
 In an infringement case the Court will not allow the decision 
 of a law officer to be read as an authority. (5 0. B. 43(i.) 
 
 (s) Mason v. G-oodwin. [1889] 
 
 Chitty, J., held that the patent (which was for improvements 
 in stone-breaking machines) was for a combination, and that the 
 defendant's machine was not an infringement. (6 0. B. 235.) 
 
 By Worhing and MaJcing. 
 (<) Jones v. Pearce. N. P. [1832] 
 
 Action for the infringement of a patent for an improved method 
 of making carriage wheels on the principle of suspension. A 
 ■wheel upon the same principle, but of different construction, had 
 been made by Mr. Strutt prior to the date of the patent. 
 Patteson, J., in summing up the case to the jury, said: "The 
 defendant has constructed a wheel, whose construction is on the 
 suspension principle. That alone would not make it an infringe- 
 ment of the plaintiff's patent, because the suspension principle 
 might be applied in various ways ; but if you think it is applied 
 in the same way as according to the plaintijQf's patent it is applied, 
 then the want of two or three circumstances in the defendant's 
 wheel, which are contained in the plaintiffs specification, would 
 not prevent the plaintiif's recovering. It would be quite a 
 different thing if it was shown that the defendant had his com- 
 munication long before with Mr. Strutt, and had constructed some- 
 thing like Mr. Strutt's invention without any knowledge of the 
 plaintiff's patent — it would be the hardest possible thing to say 
 that this was an infringement of the plaintiff's patent." (1 Web. 
 P. 0. 124.) The defendant would be liable for infringement unless 
 he made the wheels for amusement or as a model. (I&. 125.) 
 
 (u) Macnamara v. Hulse. N. P. [1842] 
 
 If an invention, for which a patent is granted, would, if put 
 into practice, be useful, an action for the infringement of the 
 patent may be maintained, although the plaintiff's invention 
 has never been put into actual use, except by the defendant, 
 when he infringed the patent. {Car. & M. 471.) 
 
By Working and Making. 157 
 
 (v) Gibson v. Beand. [1842] 
 
 Tindal, C.J., in delivering judgment, said : " Tlie breach 
 alleged in the declaration is that the defendant infringed the 
 patent, by making and putting in practice the plaintiff's inven- 
 tion ; and the evidence is, that he gave an order in England, 
 ■which order was executed in England, for making articles by 
 the same mode for which the plaintiffs had obtained their 
 patent, which articles were afterwards received by the defendant. 
 This is quite sufficient to satisfy an allegation' that he made 
 those articles ; for he that causes and procures to be made, may 
 be well said to have made them himself." (11 L. J., C. P. 183 ; 
 4:M.&G. 196 ; 1 Web. P. C. 631.) 
 
 (w) MuNTZ V. Foster. N. P. [1844] 
 
 Action for the infringement of a patent for " an improved 
 manufacture of metal plates for sheathing the bottoms of ships." 
 The patentee described his invention as consisting in making 
 the said plates of an " alloy of foreign zinc," and of " best 
 selected copper ; " the metals being melted together in certain 
 stated proportions. Tindal, C.J., told the jury that if the 
 defendant had " actually made any small experiment for the 
 purpose of ascertaining what the proportions or properties of 
 the different alloys would come to, that would scarcely have 
 been said to be a making in violation of the patent." (2 We6. 
 P. C. 101.) 
 
 (a;) Caldwell v. Vanvlissengen. Ch. [1851] 
 
 The exclusive rights under an English patent will be enforced 
 against foreigners while in England, in the same way and to 
 the same extent as it would against British subjects. Therefore, 
 in a case in which the foreign owners of a ship caused to be 
 made in their own country, and attached to their vessel, a steam 
 screw propeller, the manufacture and user of which was un- 
 restrained by law there, but restricted in England by a patent, 
 and afterwards sent the vessel with a cargo for the purpose of 
 trade to England, the use of the steam propeller was restrained 
 by injunction while the vessel should be within the waters 
 covered by the English patent. (16 Jur. 115 ; 21 L. J., Ch. 97.) 
 [But see now sect. 43 of the Patents Act of 1883, p. 145.] 
 
 (ji) Smith ii. Davidson. [1857] 
 
 The Lord President said : " This is a case not very common, 
 — one of contemporaneous invention. The jury have found in 
 effect that the pursuer and defenders were each of them original 
 inventors of improvements in their department of trade — that 
 their inventions were substantially the same — and that they 
 were contemporaneous inventors. The pursuer obtained a pro- 
 visional specification on 14th Nov. 1853, before which time the 
 defender, Davidson, acting independently, had perfected his 
 invention. He used his own invention from and after that day. 
 The provisional protection did not, during its currency, disable 
 
158 INFRINGEMENT: 
 
 him or disentitle Mm from using his own invention, and the 
 question is, whether the giving out of letters ^patent disentitles 
 iim to continue the use of it under pain of feeing liable as an 
 
 infringer of the patent It is contended that the patent 
 
 could not prevent him doing what he was doing before it was 
 granted, and at most could only prevent him using the pursuer's 
 invention, but not his own. The first of these grounds admits of 
 two answers— First, if the 14th Nov. 1853 be taken to be the 
 true and legal date of the letters patent, as I think it must, there 
 was nothing done by Davidson before that date which amounted 
 to use of his invention, and therefore it cannot be a hardship to 
 prevent him doing what he was not doing before that date, and 
 before the date of the letters patent he was not using the inven- 
 tion for the purpose of trade. Second, although the une of thei 
 invention during the subsistence of the provisional protection 
 does not expose the user to prosecution as an infringer, there is 
 nothing in the statute from which we can infer that it enables 
 him to continue such user after the letters patent are given out; 
 The case of the defenders, therefore, must rest on the other 
 ground, that Davidson was using, not the pursuer's invention, 
 but truly his own invention ; supported by the fact found by the 
 jury, that he was an original inventor, that this machine was 
 made by him, and that he was using that machine till the 1st 
 February, 1854. He also founds on an inference to be deduced 
 from the terms of the letters patent, which limit the monopoly .of 
 the pursuer to the use of his own invention. That raises a 
 question of novelty and importance. I am of opinion that the) 
 argument so maintained on the part of Davidson is not sound in 
 law. When a patent is validly granted, then I think that the 
 party who obtains the patent is held to be the owner of that 
 invention described in the letters patent. A monopoly of it is 
 given to him as being his invention, because he is the party who 
 has given to the public that invention. A party may live and 
 die, taking the knowledge of his invention with him, but the 
 disclosure of the invention and the means by which it shall be put 
 in use, are the conditions on which he obtains a monopoly of it 
 from the public, and the party who comes forward and complies 
 with that condition, being himself the true inventor, gets the 
 
 right to the monopoly of that invention A separate 
 
 inventor who comes after him does not borrow the- invention if 
 he is truly original in bis invention. But if this defender, who 
 was an inventor before the date of the patent, but had not then 
 brought his invention to peifection or made it public, is entitled 
 to use it merely because he can say he did not take it from the 
 patent, may not any person take the invention from the defender, 
 using his invention, and not the invention of the patentee, and so 
 the patent may be altogether destroyed. To allow this, therefore, 
 would be to destroy the validity of the monopoly. I see no 
 ground for the defender's doctrine, from the policy of the statute, 
 from the history of this monopoly, or from the terms of the letters 
 patent. On the contrary, 1 think that the true reading, of all is. 
 
By Working and Making. 159 
 
 that by giving the public the benefit of the invention, that 
 invention, and everything that is substantially the same with 
 it, and which was not public before the date of the patent, is the 
 invention of the patentee, and that no person has a right to destroy 
 his monopoly by using machinery or improvements substantially 
 the same with his." (19 G. S. 697.) 
 
 (2) Lister v. Leather. [1857] 
 
 Lord Campbell, C.J., in delivering the judgment of the Court, 
 said : " The patent for an improvement on an invention already 
 the subject of a patent, if confined to the improvement, is not 
 an infringement of the former patent. The use of the improve- 
 ment with the former invention, during the existence of the 
 former patent, without licence, would be an infringement; but, 
 with licence, that also would be lawful." (8 Ell. & B. 1017.) 
 
 (a) Hills v. The Liverpool United Gaslight Company. Ch. 
 
 [1862] 
 
 A patent was granted for an invention for the purification of 
 gas by means of precipitated or hydrated oxides of iron. The 
 specification was held to include such precipitated or hydrated 
 oxides only as were obtained by artificial means. The use of a 
 natural substance, such as bog ochre, containing precipitated 
 oxide of iron, so long as it was used in its native condition, was 
 held not to be an infringement of the patent ; but upon this sub- 
 stance being re-oxidised or renovated in the manner described in 
 the specification, or in any other manner, it was brought into the 
 condition of being one of the patented purifying materials, that is, 
 a hydrated or precipitated oxide artificially obtained, the use of 
 which became an infringement. (32 L. J., Gh. 28 ; 9 Jur., N. S. 140 ; 
 7 L. T. Bep., N. S. 637.) 
 
 (6) Newall v. Elliott. [1864] 
 
 The plaintiff's patent was for " improvements in apparatus 
 employed in laying down submarine electric telegraph wires." 
 The specification claimed : " First, coiling the wire or cable round 
 a cone ; secondly, the supports placed cylindrically outside the 
 coil round the cone ; thirdly, the use of rings in combination with 
 the cone, as described." The defendants put up on board a ship, 
 in this country, an apparatus consisting of an external cylinder 
 round a coil, and an internal cylinder capable of beiiig so altered 
 as to form a mechanical equivalent to a cone. There was also a 
 ring on board similar to the plaintiff's rings. In this the defen- 
 dants did no more than they had done before the patent for the 
 purpose of safe carriage ; and there was no further evidence that 
 they did it now for any other purpose ; — Held, first, that this was 
 no infringement of the patent ; secondly, that the patent, being 
 limited to the United Kingdom, the Channel Islands, and the 
 Isle of Man, could not be infringed by any act done on board an 
 English vessel at Malta, or on the high seas. (10 Jur., N. S. 954; 
 13 W. B.n; 10 L. T. Bep., N. S. 792.) 
 
160 INFEINGEMENT : 
 
 Martin, B. : " A patent for a combination may be a good patent, 
 but if there has been used before any portion of that which con- 
 stitutes the combination, the public have a perfect right to use it." 
 (10 Jur., N. S. 957.) 
 
 Bramwell, B. : " If a man fits up on board a ship a part of a 
 machine, and he has the other part there, so that he may apply 
 the whole of the patented machine when he gets out of England, 
 he may infringe the invention." (lb. 958.) 
 
 (c) GoucHEE V. Clayton. Ch. [1865] 
 
 Though the manufacture in this country of the several parts of 
 a patented machine, and the exportation of those parts, may not 
 be an infringement of a patent for a new combination of machinery, 
 when the parts exported are old, it is otherwise where the parts 
 exported are new, and are claimed as new. (11 Jur., N. S. 462 ; 
 13 L. T. Sep., N. S. 115.) 
 
 (d) Betts v. Neilson. H. L. [1865-71] 
 
 The plaintiff was patentee of a substance for making capsules 
 to cover the mouths of bottles so as to render them air-tight. A 
 brewer in Scotland, to which country the patent did not extend, 
 sent to an English port for shipment to his foreign customers 
 bottles of beer covered with similar capsules made abroad : — Held, 
 that since the capsules, during the time of the bottles being in 
 England, were answering the purpose for which they were 
 intended, of preserving the liquor, there was a user of the inven- 
 tion in England which ought to be restrained by injunction. 
 (6 N. B. 221 ; 11 Jur., N. S. 679 ; 34 L. J., Oh. 537 ; 13 W. B. 
 1028; 3 De Q., J. & S.82; 12 L. T. Bep., N. S. 719; L. Bep., 
 3 Ch. 429 ; 37 L. J, Ch. 321 ; 18 L. T. Bep., N. S. 169 ; afBrmed 
 on appeal to the House of Lords, L. B., 5 H. L. I; 40 L. J., 
 Ch. 317; 19 W. B. 1121.) Wood, V.-C, said he could well 
 conceive a case in which there would be no user in England, as 
 for instance, foreign tools, infringing an English patent, packed 
 up in boxes and lying inert, or transhipped in course of transit in 
 an English harbour. (6 N. B. 222.) Turner, L.J., in the course 
 of his judgment, said : " The case of Caldwell v. Vanvlissengen may 
 be in some respects distinguishable from the present, but I think 
 that it disposes of the present question. . . . Now, the distinc- 
 tion attempted to be drawn between that case and the present is 
 this, that in that case there was an active use of the patented 
 article, and here it is said, and I have no doubt truly said, that 
 the use of the patented article is passive and not active. But it 
 does not appear to me that the question whether the user is active 
 or passive can have any bearing on the question whether the 
 patented article is used or not." (3 De O., J. & S. 87.) 
 
 (e) Freaeson v. Loe. M. E. [1879] 
 
 Jessel, M.E. : " If a man makes things merely by way of bona 
 fide experiment, and not with the intention of selling and making 
 use of the thing so made for the purpose of which a patent has 
 
By Worhing and Maldng. 161 
 
 been granted, but with the view of improving upon the invention 
 the subject of the patent, or with the view of seeing whether an 
 improvement can be made or not, that is not an invasion of the 
 exclusive rights granted by the patent. Patent rights were never 
 granted to prevent persons of ingenuitj' exercising their talents 
 in a fair way. But if there be neither using nor vending of the 
 invention for profit, the mere making for the purpose of experi- 
 ment, and not for a fraudulent purpose, ought not to be considered 
 within the meaning of the prohibition, and, if it were, it is cer- 
 tainly not the subject for an injunction. But where you see a 
 man using a machine, as this defendant has done, under claim of 
 a right to use it, and under that claim of right he makes a quantity 
 of goods, even though a small quantity, I cannot call that an 
 experiment within the meaning of the rule as to experiments. 
 He has made a machine, and, knowing it to be an infringement 
 of a patent, he claims the right to make and use it, and his ex- 
 periment is made to see hoW his machine works." (L. Ji., 
 9 Gh. D. 66.) 
 
 (/) Sykes v. Howarth. Fry, J. [1879] 
 
 In an action for infringement of a patent for improvements in 
 fancy rollers by the introduction of wide spaces between the cards 
 in machines lor carding wool, the defendant, a card-maker, con- 
 tracted for a lump sum to clothe certain machines with cards so 
 arranged as to infringe the patent. The "nailer" who fixed the 
 cards, which is a separate business from card-making, was nomi- 
 nated by the owner of the machine, but paid by the defendant. 
 
 Fry, J., in delivering judgment, said : " The prohibiting part 
 of the letters patent directs that no person, except the patentee 
 and those who derive title under him, shall, during the period of 
 the existence of the patent, ' either directly or indirectly, do, use, 
 or put in practice the said invention.' ' Putting in practice ' is 
 evidently in the mind of the Crown something different from user, 
 and I really do not know what could be ' putting in practice ' 
 as contrasted with ' using,' if what the defendant did in this, 
 case was not putting in practice the plaintiff's invention." (i. B., 
 12 Ck. D. 832.) 
 
 (g) Adair v. Young. C. A. [1879] 
 
 An action was brought against the master of a ship to restrain 
 him from using pumps proved to be an infringement of the 
 plaintiff's patent. The ship had been exclusively fitted up with 
 such pumps before the defendant, who was not a part owner, had 
 taken command; he had nothing to do with putting them on 
 board, and they had never been worked in British waters. An 
 injunction was granted. (L. B., 12 Gh. D. 13.) 
 
 Brett, L. J., in delivering judgment, said : " A distinction has 
 been attempted to be made between using the pumps and using 
 the invention, but I cannot see any such distinction. It is said 
 that he was bound to have pumps on board, and would be 
 liable if he put to sea without them ; that they were necessary to 
 
 M 
 
162 INFEINGEMENT : 
 
 make the equipment of the ship complete, and that, therefore, the 
 having them on hoard was using them. Since the master had 
 no power to say whether he would have them on hoard or not, he 
 cannot, in my opinion, be said to use them unless he used them as 
 pumps. If they are so used, that is a user by him, but in this 
 case he never did so us-e them within British waters, and, in my 
 opinion, therefore, he never did infringe the patent. . . . Whether 
 there was a user by the owners is a different question, on which I 
 give no opinion." (lb. 19.) 
 
 Colton, L. J., said: "I do not give any opinion whether there 
 has been such a user as would subject the master to an action for 
 damages ; but I think we must come to the conclusion that there 
 has been such an intention to use the pumps as to lay sufficient 
 ground for an injunction to restrain the infringement of the 
 plaintiff's patent rights." (lb. 19.) 
 
 (h) Nobel's Explosives Company v. Jones, Scott and Co. H. L. 
 [1883] 
 Patent for an invention rendering nitro-glycerine less dangerous. 
 Foreigners manufactured abroad an article compounded of nitro- 
 glycerine and other substances according to the patented process, 
 and imported it into England. The defendants, acting as Custom- 
 house agents for the importers, passed the article through the 
 Custom-house, and obtained permission (as required by the Explo- 
 sives Act, 1875) for landing and storing it in magazines belonging 
 to the importers : — Meld, that the defendants being only Custom- 
 house agents and not themselves importers, and having neither 
 possession of nor control over the goods, their acts did not amount 
 to an exercise or user of the patent such as to be an infringement. 
 (8 4pp. a 5; 17 Ch. D. 721.) 
 
 (i) United Telephone Company v. London and Globe Telephone 
 AND Maintenance Company. [1884] 
 The defendant company contracted with an American agent for 
 the purchase of 800 Blake transmitters, royalty paid. On the 
 same day, the plaintiff company, who already owned an Edison 
 patent for the same object, became assignees of Blake's patent, and 
 proceeded to disclaim certain parts of the Edison patent, which 
 they were allowed to do on terms that no proceedings for infringe- 
 ment should be taken in respect of (inter alia) any instruments 
 manufactured in pursuance of any contract already bond fide 
 entered into bj' the defendants. Any question of bond fides was to 
 be leferred to the Attorney-General, who found, as a fact, that the 
 contract in question was made bond fide. Subsequently, the 800 
 Blake transmitters, which had not paid royalty, arrived in England, 
 and were placed by the defendants unused in a warehouse, and 
 were afterwards dismantled : — Seld, that the possession of the 
 machines was an infringement of the plaintiffs' patent rights, and 
 an injunction granted : — Held also, that the decision of the Attorney- 
 General in no way affected an action for infringement of the Blake 
 patent. The Court refused to order the destruction or delivery 
 up of the machines. (26 Ch. D. 766.) 
 
By Vending. 163 
 
 (i) United Telephone Company v. Shaeples. [1885] 
 
 The defendant bonght telephones abroad, and imported them for 
 the purpose of allowing his pupils to experiment upon them, in 
 order to avoid using similar, but more costly, instruments which 
 had paid royalty : — Seld, that this was a user for the purpose of 
 advantage, and was an infringement. (29 Gh. D. 164; Qriff. 232.) 
 
 (j) Edison and Swan Electric Light Company v. Holland. [1888] 
 
 The user of an invention for a different purpose may still be 
 an infringement. (6 0. B. 483.) 
 
 (j^) DowLiNG V. Billingtcn. [1890] 
 
 The defendants had opposed the plaintiff's application for a 
 patent, and had infringed it both before the acceptance of the 
 specification and after this action was commenced: — Held, that 
 although there was no actionable infringement, there was evidence 
 of an intention to infringe, and an injunction was granted with 
 costs. (7 0. B. 191.) 
 
 By Vending. 
 
 (Jc) Minter v. Williams. [1835] 
 
 Semble, the mere exposing an article manufactured by a patent 
 process for sale is not an infringement of the letters patent. 
 (1 Weh. P. 0. 136 ; 5 Nev. & M. 647 ; 4: Ad. d Ell. 251 ; 1 H. & W. 
 685.) 
 
 (Z) Gibson v. Brand. N. P. [1841] 
 
 The declaration assigned as a breach " that the defendant 
 directly or indirectly made, used, and put in practice the said 
 invention." Tindal, C.J., said to the jury : " If they (the defen- 
 dants) have themselves sold an article of exactly the same fabric, 
 made in the same manner as that for which the patent w^as taken 
 out, such sale may be considered as a using of the invention within 
 the terms of the declaration." (1 Weh. P. 0. 630.) 
 
 (to) Muntz v. Foster. N. P. [1844] 
 
 The making of a patent article for sale, although it was in fact 
 never sold or even offered for sale, is an infringement. (2 Web. 
 
 P. a 101.) 
 
 (») HiGGS V. Goodwin. [1868] 
 
 The invention for which the patent was granted was " treating 
 chemically the collected contents of sewers and drains in cities, 
 towns, and villages, so that the same may be applicable to 
 agricultural and other useful purpose." The patentee claimed 
 "the precipitation of animal and vegetable matter from sewage 
 water by means of the chemical agent hereinbefore described :" — 
 Held, that the defendant, by using the patented process, not with 
 the object of making a saleable mercantile article, but merely to 
 purify the water, did not infringe the plaintiff's patent. (^Ell. 
 Bl. & mi. 529 ; 5 Jur., N. S. 97 ; 27 L. J., Q. B. 421.) 
 
 M 2 
 
104 INFEINGEMENT : 
 
 (o) Walton v. Lavater. [1860] , 
 
 The importation and sale of a patented article is evidence of an 
 infringement. Erie, C.J. : " Tlie next point contended for is, that 
 there has been no infringement by the defendant, because he had. 
 only sold the articles, the sale, moreover, being only a sale of 
 articles imported from abroad. I have heard the arguments of the; 
 learned counsel on both sides, derived from the original statute, 
 which uses the words ' working and making,' and from the form of 
 the expression in the letters patent prohibiting the making, using, 
 or putting in practice the invention, and the words granting to, 
 the patentee the privilege to ' make, use, exercise and vend.' All 
 these words are capable of some of the constructions which have 
 been contended for ; but it appears to me that the main purpose of 
 the patent is to give the profit to the patentee, and that the main 
 mode of defeating that purpose would be by selling the patented 
 article ; and it seems to me that without proof of the making of 
 the article by the inf linger, evidence that he sold the patented 
 article for profit would be good evidence upon which a jury might 
 find that he had infringed the patent. With respect to the 
 defendant not being liable, because the articles were imported 
 from abroad, I should say that, even if it was a simple case of 
 importation, without any proof of knowledge of the article being 
 patented, or of the infringement, it would be sufficient evidence of 
 infringement that the defendant had imported and sold." (29 L. J., 
 a P. 279.) See also Betts v. Neilson, p. 160 {d.) 
 
 (p) OXLEY V. HOLDEN. [1860] 
 
 The manufacture of a patent article for the purpose of sale, and 
 offering it for sale, although no sale is actually effected, is a user 
 of the invention. (8 G. B., N. S. 666 ; 30 L. J., G. P. 68 ; 8 W. B. 
 620 ; 2L. T. Bep., N. S. 464.) 
 
 (g) Thomas «. Hunt. [1864] 
 
 A licence to A. to manufacture a patent article is an authority 
 to his vendees to sell it without the consent of the patentee. 
 (17 G. B., N. S. 183.) 
 
 (»•) Elmslie v. Bouksiee. Ch. [1869] 
 
 The importation into this country and sale here, of goods manu- 
 factured abroad, by a process patented in this country, is an 
 infringement of the patent. (39 L. J., Gh. 328 ; i. Bep., 9 Eq. 
 
 !.217.) 
 
 (s) Betts v. Willmott. Ch. [1870] 
 
 A patentee cannot maintain a suit against a retail dealer who 
 unwittingly sells articles which are an infringement of his patent, 
 provided such retail dealer gives full information as to the persons 
 from whom he obtained the articles complained of, and promises 
 not to retail any more. (18 W. B. 946 ; affirmed on appeal, L. Bep., 
 6 Gh. 239 ; 19 W. B. 369.) 
 
By Vending- 165 
 
 '(<) "Wright «. Hitchcock. [1870] 
 
 Held, that the defendants had infringed the plaintiff's patent, 
 by buying and selling in large quantities, articles man'ifactured 
 by a process which was an infringement of the plaintiff's patent. 
 Upon this point Kelly, C.B., said : " Undoubtedly the statute 
 (21 Jac. 1, c. 3) only authorises the grunt of patents for the 
 exclusive ' working or making ' of articles of new manufacture. 
 .- . . . Now, in the first place, although the statute does not 
 contain the word 'vend,' we may naturally locikat the construction 
 put upon the statute by the language of the patents which have 
 been granted for more than two centuries, and which we find 
 expressly give to the patentee the exclusive right of, among other 
 
 things, using and vending the article patented If it is 
 
 necessary to decide the point, I am clearly of opinion that if a man 
 takes out a patent for a new manufacture, by means of which an 
 article can be made for a price considerably less than by any means 
 theretofore employed, and another buys and sells that article, I do 
 not say upon a single occasion, because each case ought to be 
 determined with reference to its own circumstances, but in the 
 way of his trade, buying aud selling the article in large quantities, 
 knowing it to have been manufactured by means of certain 
 machinery, which machinery is de facto, though he may not know 
 it, the same as that of the patentee, such buying and selling is an 
 infringement of the patent rights of the patentee." (39 L. J., 
 Exch. 103.) Martin, B., said: "I can understand that if a man 
 took out a patent for the manufacture of flour by means of a new 
 apparatus, and the flour produced was the identical thing produced 
 by another mill, then there would be great difficulty in holding a 
 sale of the flour to be an infringement of the patent. But there is 
 here a great improvement in the article manufactured by the 
 machinery ; and it was made more quickly and cheaper than 
 before." (Ih. 104.) Pigott, B. : " If be merely bought a small 
 quantity, not knowing where it came from, for his own use, that 
 might not be infringing the patent." (16. 106.) 
 
 (u) TowNSEND V. Haworth. M. E. & 0. A. [1875] 
 
 Bill to restrain A. and B. from infringing a patent for the use of 
 well-known chemical substances, in a specified manner, to obtain 
 a particular result : — Held, by Master of the Eolls, and judgment 
 affirmed by Lords Justices, that : — 
 
 (1) A. does not infringe the patent by selling the known 
 
 chemical substances to B., with knowledge that B. 
 intends to use them in infringement of the patent, the 
 validity of which he disputes. 
 
 (2) If A. sells the known chemical substances to B., not only with 
 
 knowledge that B. intends to use them in infringement 
 of the patent, but also, in consideration of such purchase, 
 indemnifies B. from all consequences of such purchase and 
 use, both A. and B. knowing the patent to be valid, the 
 agreement for indemnity is invalid as against public 
 policy, and A. is not guilty of an infringement. 
 
166 INFEINGEMENT : 
 
 (3) If, under tte same circumstances, tlie patent is disputed or 
 likely to be disputed, the indemnity is valid, but A. is 
 not guilty of an infringement. 
 (Affirmed on appeal to Court of Appeal. Not reported — for 
 imperfect note of judgment see L. B., 12 Ch. D. 831 («.). As tbis 
 case is an important one, and is not to be found in tbe books, 
 the judgment of tbe Master of tbe Eolls is given at lengtb.) 
 
 Jessel, M.E. : " Tbe plaintiifs bavo a patent for preserving 
 certain vegetable substances, take cotton, for instance. Tbey say 
 you preserve cotton from mildew by dipping it into a solution of 
 certain cbemical substances. Tbat is a broad way of putting it. 
 Chief of those chemical substances are substances which are per- 
 fectly well known, and most of them are common substances ; 
 they are all old chemical compounxls, and there is no claim in the 
 patent at all, except for the peculiar use of these cbemical com- 
 pounds for the purpose of preserving tbe cloth from mildew. No 
 one has contended, and no one can contend, I should think, with 
 any chance of success in a court of justice, that the vendors of 
 those chemicals may not continue to pursue their trade as hereto- 
 fore, and supply the chemicals to any one who chooses to buy them. 
 No one has said, as far as I am aware — when I say 'no one,' 
 I mean no judge has said — tbat the vendor of an ordinary in- 
 gredient commits a crime or an offence, or does even a wrong, 
 if the purchaser, coming to him, says, ' I want your compound 
 because I want to preserve my cloth from mildew, and you and 
 I know there is a patent, but still I wish to try tbe question with 
 the patentee.' No one would doubt that the sale would be per- 
 fectly legal, and would not enable the patentee to complain, with 
 effect, of tbe conduct of the vendor of the chemical compound in a 
 court of justice. 
 
 " But it is said that if tbe person who sells the compound goes 
 a step further, and not only supplies it with the knowledge that 
 it is to be used in the infringement of a patent, but says : ' If you 
 buy my compound of me I will indemnify you from all conse- 
 quences,' that makes him an actual infringer of the patent. Now 
 that must be put in one of two ways. Either he knows the patent 
 to be valid, or be believes it to be invalid or capable of being 
 disputed, and I asked the counsel for the bill whether, in the first 
 case, both the purchaser and the vendor being perfectly aware 
 that the patent was a valid patent, and that the infringement 
 therefore was a wrongful act, the agreement for indemnity would 
 not be against public policy, and therefore invalid. Now it does 
 appear to me that there is a great deal to be said for tbat propo- 
 sition, and in tbe absence of authority I should have thought that 
 an agreement to induce another to commit a wrongful act of tbat 
 character, as a rule using tbe • word ' wrongful ' in its natural 
 sense, that which is prohibited by law, was invalid as being 
 against public policy. In fact, our law has gone a great deal 
 further, because it has held that contracts to supply goods for 
 immoral purposes are invalid, not merely prohibited directly by 
 law, but things to which the common law did not reach by direct 
 
By Vending. 167 
 
 'pioWbition, and I confess I should have thought such a contract 
 was not enforceable — when I say 'enforceable,' I do not mean 
 re.iliy not enforceable in the Court, but was a contract upon which 
 an action at law could not be maintained. If, theiefore, the 
 meaning of the allegation in the bill is this, that both parties 
 were thoroughly well aware that the patent was valid, but that 
 the defendants, the company, with the view of making a profit 
 on the sale of the ciiemical compounds, agree to indemnify the 
 purchaser, Mr. Haworth, from all actions to whio'li he would 
 become liable, as a matter of course, at the suit of the owners 
 of the patent, it does appear to me that such an agreement 
 would not be binding. On the other hand, if the patent were 
 doubtful, as every man has a right to dispute a patent, and 
 as every man has a right to say that ' the existence of this 
 patent shall not interfere with carrying on my business as usual,' 
 as every man must have a right to say to the purcbaber of his 
 goods, 'there is no valid prohibition against mv selling them, 
 the alleged patent is invalid, and I will indemnify you from the 
 consequences.' 
 
 " The notion of any other doctrine being upheld seems to me 
 fraught with the most tremendous consequences. You would not 
 only give patentees who have good patents a monopoly, but you 
 would al.so give patentees with bad patents a monopoly, because 
 they would be enabled to say, no man shall supply goods which 
 are not protected by the patent, with a guarantee to the purchaser 
 to save him harmless from the hands of the patentee, and we 
 know what the effect of a threat of attack, even by the liolder of 
 an invalid patent has, as a general rule, in deterring persons from 
 purchasing the goods so alleged to be protected. Therefore, I am 
 of opinion that if the patent were disputed, or likely to be dis- 
 puted, this indemnity would be valid, and could not be attacked 
 in any shape or in any way. Now, taking the second case, if 
 that were the view of the defendants, I am satisfied that it was 
 no harm if they sold the goods fur the express purpose of their 
 being used in the infringement of the patent, or thought the 
 patent fairly open to dispute. Therefore, if that is the true con- 
 struction of the bill, I think they did nothing wrong whatever, 
 and in no way could they be said to be direct infringers of the 
 patent. They sold the goods for the purpose of being used, no 
 doubt, for the infringement of the patent, but the indemnity they 
 gave does not appear to add to the case at all, unless you can 
 make out the broad proposition, which I think was not contended 
 for, that any person selling any article, either organic or in- 
 organic, either produced by nature or produced by art, which 
 could in any way be used in the making of a patented article, can 
 be sued as an infringer, if he knows that the purchaser intends to 
 make use of it for that purpose. I do not think that broad propo- 
 sition was attempted to be supported, and if that cannot be sup 
 ported, as it appears to me it cannot, then in the second case it seems 
 to me to be perfectly plain that the company in question could not 
 be sued as infringers. 
 
168 INFEINGEMENT: 
 
 " I now come to the first case, that they both knew at the time 
 that the patent was valid. Now, the whole of the case, if it can 
 he tiiipported. at all, depends on the knowledge of the validity, 
 because the bona fides of the transaction depends entirely on that 
 knowledge. Now the rule is, that allegations should be taken 
 against the pleader if there is any doubt about them, and of all 
 allegations in the world, allegations which impute fraud, or intent 
 to commit a w^rong, must be plain, clear and indubitable. Now, I 
 must say I cannot find any such allegations in this bill. I cannot 
 find, though it may have been present to the mind of the drafts- 
 man, the allegation, and I am not sure that the defendants, the 
 company, being well aware that the patent was valid, supplied 
 these goods with intent to enable Mr. Haworth to infringe it. I 
 am by no means of opinion that the allegation was left out acci- 
 dentally. I think it will probably turn out that there was a 
 contention or intended contention as to the validity of the letters 
 patent. But, supposing it had been in, then comes the much more 
 difficult question, as to whether a person who so acts can be treated 
 by the inventor as an infringer of the letters patent. Now, what 
 is he prohibited from doing ? He is prohibited from making, 
 using or vending the patented article, and that, of course, includes, 
 in the case of machinery, the product, if I may say so, of the 
 machinery which is the subject of the patent. It is that which 
 is produced by the patent. To that extent I entirely concur with 
 ■what has been said as to the exposition of the law. But has any 
 one ever dreamt, before this case, that that extends to the com- 
 ponent articles which enter into the patent ? So far from that 
 being the law, it has been decided that, in cases of what they call 
 combination patents, it is only the combination claimed that may 
 not be used; the other elementary combinations may be used: 
 No doubt there has been a great deal of litigation on the question 
 as to what were the combinations claimed, that is, whether in 
 claiming the entire combinations you claim the subsidiary combi- 
 nations or not. But the whole of the arguments have proceeded 
 on the assumption, that you could not even complain of the use of 
 subsidiary combinations, unless they were within the purview of 
 your claim. The lines of cases seem to me to show conclusively 
 that the mere making, using or vending of the elements, if I may 
 say so, which afterwards enter into the combination is not pro- 
 hibited by the patent, and, if not prohibited, I do not see how I 
 am to extend the patent laws to make a new prohibition. But it 
 is said, and the way it has been put does great credit to the inge- 
 nuity of counsel, that, although that may be very good law, if 
 you show the vendor was merely using the infringer as his agent, 
 or partner, he will be an infringer; or, to put it into common 
 language, if the infringer were the mere cat's-paw of the vendor, 
 that would raise a totally different question. That would raise 
 this question, who was the actual infringer ? It is not the man 
 who puts his hand to the machine who is the infringer. The 
 mere workman employed is not the infringer. Of course, I agree 
 that you may pass over the mere mechanic, who puts the machine 
 
By Vending. 169 
 
 together, and get at his employer, and if it could be shown, or if 
 it were shown, by sufficient allegation, that the company intended 
 to carry on the business of making these cloths, knowing that the 
 patent was valid, but being unwilling to incur the risk of actions 
 for infringement, set up Mr. Ha worth to carry on the tiade, 
 supplied him with the material on which they got the real profit, 
 which arose from the patented article, and that he did not carry 
 on the trade bond fide for himself, but on their behalf, a totally 
 different set of considerations would arise, and it might well be 
 they would be treated in this Court as the actual infringers, and 
 not Mr. Haworth. When that case is made out, it will be time 
 enough to consider it. But this bill does not make that case. 
 This bill treats the company as proper defendants, solely and 
 simply on the ground of their bond fides in endeavouring to sell for 
 their own profit, not as selling to a person who would not have 
 bought of them without an indemnity, and, therefore, would not 
 have infringed in that way without they had given him an in- 
 demnity. I think that is not only a novel case, but it is an attempt 
 to extend the patent laws beyond their purport that such permission 
 ought to be granted now by me, at all events for the fi.rst time, and, 
 therefore, I allow the demurrer." 
 
 (v) Dixon v. The London Small Akms Company Limited. H. L. 
 [1877] 
 
 A patent in the usual terms was granted for an improvement 
 in the manufacture of fire-arms. The Secretary at War issued 
 a notice for a tender for the supply of 13,875 rifles of the 
 _ description known as that patented. The price was settled, 
 minus the cost of the steel barrels and the stocks, which the 
 War Office was to supply. The rifles were to be delivered 
 virithin a certain time, the manufacture of them might be 
 inspected at any time, and they might be rejected by officers 
 at the War Office, if not made according to pattern, or not 
 delivered in time. The persons who took the contract em- 
 ployed the patented process in the formation and insertion 
 of the lock : — Seld, by the House of Lords (L. B., 1 App. Gas. 
 632), reversing the Court of Appeal {L. B., 1 Q. B. J). 884), 
 and affirming the Queen's Bench Division (J>. B., 10 Q. B. 
 130), that they were liable to the patentee for an infringement 
 of the patent, for that they were not servants or agents of the 
 Crown doing the work of the Crown, but were private con- 
 tractors with the Crown to supply a certain manufactured 
 article, and were, therefore, not protected in what they did 
 by any particular privilege attaching to the Crown. 
 
 Lord Cairns, L.C., said : " If they (respondents) were the 
 servants and the agents of the Crown, acting on behalf of and 
 for the use of the Crown, then it may be that they would have 
 the privileges with reference to the patent which the case of 
 Feather v. The Queen (6 B. & S. 257) decided to remain in 
 the Crown, even although there is nothing whatever in the 
 contract expressly taking notice of those privileges, or autho- 
 
170 INFEINGEMENT : 
 
 rizing the respondents to exercise them Is it the case 
 
 that the respondents in the appeal before your lordships fill 
 the position of officers, agents or servants of the Crown, 
 acting on behalf of and for the use of the Crown ? Now, my 
 lords, in order to answer that question you must turn to the 
 contract itself. . . ." The person who is called the contractor is 
 " a tradesman, and not the less a tradesman because he is engaged 
 in works of a very large and extensive character ; he is a trades- 
 man manufacturing certain goods for the purpose of supplying 
 them according to a certain standard which is laid before him as 
 a condition on which the goods will be accepted." (L. B., 1 App. 
 Cas. 641, 642, 644.) 
 
 Lord Penzance : " I think the true distinction in this case is 
 between an authority or mandate to do a thing for a money 
 reward, in the doing of which, whether the individual is a servant 
 or only a contractor, he is all along acting as an agent, and a 
 contract for the supply and acceptance, if approved, when 
 completed, of an article to be made by the contractor, in the 
 making of which the contractor, though working under inspec- 
 tion, is all along acting on Ms own behalf and at his own risk." 
 (16. 654.) 
 
 (w) Sykes v. Howarth. [1879] 
 
 Fry, J. : " Selling articles to persons to be used for the purpose 
 of infringing a patent is not an infringement of the patent." 
 {L. B., 12 Ch. D. 833.) 
 
 (a;) VoN Heydeni!. Neustadt. C. a. [1880] 
 
 A person who makes, or procures to be made, abroad a 
 product according to a patented process for sale in this country, 
 and sells the product here, does indirectly make, use, and put in 
 practice the patented invention. When a patent has been 
 granted in England for a new process for producing more cheaply 
 a chemical prodiict previously known, the importation and sale of 
 this product made abroad according to the patented process is an 
 infringement of the patent. (14 Gh. B. 230.) 
 
 (ji) Soci^Ti; AsoNYME DES Mantjfactuees de Glaces v. Tilghmans 
 Patent Sand Blast Company. C. A. [1883] 
 
 The defendants, who were the owners of patents in Belgium and 
 England for making globes, by deed executed in Belgium, granted 
 a license to the plaintiffs for the term of twenty 'years to use and 
 employ the invention at their manufactory of Val St. Lambert and 
 not elsewhere. The plaintiffs under the license manufactured the 
 articles in Belgium and sold them in England : — Held, that this 
 was an infringement of the English patent and was not covered 
 by the license. (26 Gl. D. 1.) 
 
 (z) United Telephone Company v. Henry. [1884] 
 
 Where a workman of the defendant obtained two instruments, 
 constructed in accordance with the specification, on loan from the 
 
By Working or Making New and Material part of Invention. 171 
 
 defendant, but at tlie time signed a memorandum that the 
 defendant refused to sell them to him : — Held, that there was no 
 intention to sell and no infringement. (Griff, p. 228 ; 2 0. B. 11.) 
 
 (a) Cartsbuen Company v. Shaepe. [1884] 
 
 In proceedings against the respondents for infringing a patent 
 by selling cubes of sugar, manufactured by means of apparatus 
 substantially the same as that described in the specification, it 
 was proved that the cubes sold were manufactured in America 
 by a machine very similar to the complainer's machine, but there 
 was no evidence that the machine so used possessed any of the 
 characteristic features by which the complainer's specification was 
 distinguished from previous patents. It also appeared that the 
 articles sold might have been produced by machinery which 
 involved no infringement of the complainer's patent : — Held, that 
 it did not lie on the respondents to prove that the articles were 
 not manufactured according to the specified process, and that the 
 complainers had failed to prove their case." (1 0. B. 181.) 
 
 (6) GwYNNB V. Deysdale. [1886] 
 
 In an action for infringement of ,a patent for arranging a pump 
 case with the suction and discharge pipes to swivel so as to be 
 set at any angle without interfering with the driving engine, it 
 was proved that the defendants had sold three pump cases in 
 which the pipes were capable of being moved round, but only to 
 definite anijles determined by bolt holes through which the bolts 
 passed : — Held, that the important points in the plaintiff's patent 
 were that the rotation might be made without disengaging the 
 screws, and that the screws might be clamped in any position 
 without interfering with the engine, and consequently that there 
 was no infringement. The defendants had also ofi'ered in answer 
 to enquiries instigated by the plaintifis to supply a swivelling 
 pump : — Held, that as the plaintiffs patent did not embrace every 
 arrangement of swivelling, the defendants must be presumed to 
 have meant to supply something which was cot an infringement. 
 (2 0. B. 160.) On appeal to the Court of Sessions these findings 
 were upheld. (3 0. B. 65.) 
 
 By worhing or making a new and material part of an Invention. 
 (c) Hill v. Thompson. [1818] 
 
 In a patent for a combination of processes altogether new, 
 leading to one end, any use made of any of the ingredients 
 singly, or any use made of such ingredients in partial combina- 
 tion, some of them being omitted, or any use of all or some of 
 such ingredients in proportions essentially different from those 
 specified, and yet producing a result equally beneficial with the 
 result obtained by the proportions specified, will not constitute 
 an infringement. (8 Tamt. 391 ; 2 B. Moo. 448 ; 1 Web. P. C. 
 242.) 
 
172 IKFEINGEMENT : 
 
 (d) GiLLET V. WiLBEY. N. P. [1839] 
 
 Coltman, J., in summing up the case to the jury, said : 
 " The plaintiffs must make out to your satisfaction that the 
 ■whole of the improvements were new, and that some of them 
 had been pirated. It is not necessary that they should use them 
 all, but they must be shown to be all new, and if they are all 
 new, and the defendant has infringed any one of them, it will 
 be sufficient to support the action, and it is not necessary that he 
 should havu infringed them all." (9 Car. & P. 336.) 
 
 (e) MuNTZ V. YiviAN AND Walker. [1840] 
 
 In a suit to restrain infringement it appeared that the patentee 
 claimed " The manufacture of metal plates of an alloy of copper 
 and zinc in such proportions as will enable the manufacturer to 
 roll the said alloy while at a red-heat into sheets fit for the 
 sheathing of ships, and will be sufficiently ductile to dress close t-o 
 the bottoms of such vessels, at the same time that it is more 
 durable than copper, and oxidates sufficiently to keep the said 
 bottoms clean." The defendants manufactured sheets of an alloy 
 of copper and zinc within the proportions stated in the specifica- 
 tion, but they rolled them cold : — Held, by Shadwell, V. C, that 
 the rolling hot was a material feature and an interim injunction 
 refused. (2 Webs. B. 87.) 
 
 (/) Newton v. Grand Junction Bail way Company. [1846] 
 
 Pollock, C.B: : " It was argued that the same criterion is 
 to be applied to the question of infringement as to that of 
 novelty. But that is not so. In order to ascertain the novelty, 
 you take the entire invention, and if, in all its parts combined 
 together, it answer the purpose by the introduction of any new 
 matter, by any new combination, or by a new application, it 
 is a novelty entitled to a patent. But, in considering the 
 question of infringement, all that is to be looked at is, whether 
 the defendant has pirated a part of that to which the patent 
 applies ; and if he has used that part, for the purposes for 
 which the patentee adapted his invention, and for which he 
 has taken out his patent, and the jury are of opinion that 
 the difference is merely colourable, it is an infringement." 
 (.5 Each. 334.) Alderson, B. : " If the invention consists of 
 something new and a combination of that with what is old, 
 then, if an individual takes for his own and uses that which is 
 the new part of the patent, that is an infringement of it.," (16. 
 335.) 
 
 (g) Sellers v. Dickinson. [1850] 
 
 Pollock, C.B. : " There may be an infringement by using 
 so much of a combination as is material, and it would be a 
 question for the jury whether that used was not substantially 
 the same thing." (5 Exch. 324.) " I think it may be laid down 
 as a general proposition (if a general proposition can be laid on 
 
By Working or Making New and Material part of Invention. 173 
 
 a subject applicable to such a variety of matters as patent law — 
 matters, indeed, incommensurable with each other, for the same 
 (hjctrine which would apply to a medicine would scarcely apply 
 to a new material or a new metal), that if a portion of a patent 
 for a new arrangement of machinery is in itself new and useful, 
 and another person, for the purpose of producing the same 
 effect, uses that portion of the arrangement, and substitutes, 
 for the other matters combined with it, another mechanical equi- 
 valent, that would be an infringement of the patent." (76. 326.) 
 
 (h) The Electric Telegraph Company v. Brett. [1851] 
 
 The breaches alleged in the declaration were that the defendant 
 had used and counterfeited the said invention ; the evidence was, 
 that the defendant had used or counterfeited part only. The 
 specification described nine several improvements : — Held, that the 
 declaration, in speaking of the said invention, was to be understood 
 as charging the using or counterfeiting of the said nine improve- 
 ments, and that it was suflSciently proved by showing that one of 
 them had been used. (10 G. JB. 838 ; 15 Jur. 579 ; 20 L. J., O. P. 
 123.) 
 
 (j) Newton v. Taucher. [1851] 
 
 A. obtained a patent for an improvement in packing hydraulic 
 and other machines, by means of a lining of soft metal, and thereby 
 of rendering certain parts of such machines air and fluid tight. 
 B. afterwards discovered that soft metal had the property of 
 diminishing friction, and of preventing the evolution of heat when 
 applied to the surfaces in contact of machines in rapid motion and 
 subject to pressure, and he embodied the application of that dis- 
 covery to machines in a patent : — Held, that the application of the 
 soft metal by B. differed essentially from that of A., and that there 
 was no infringement. (6 Exch. 859.) 
 
 (/) Smith v. The London and North Western Eailway Company. 
 [1863] 
 Action for the infringement of a patent for an improved wheel. 
 In the claim, the patentee stated that the new invention consisted 
 ill the circumstance that the centre boss, or nave, arms, and rim of 
 the said wheel were wholly composed of -wrought or malleable 
 iron, " welded into one solid mass, in manner hereinbefore described." 
 The defendants used a wheel, made by welding pieces of wrought 
 iron so as to form a single compact piece of wrought iron ; the 
 mode of forming the nave was the same as that in the specification ; 
 the mode of forming the rim was different : — Held, that it appearing 
 that the mode of forming the nave was a material, new, and useful 
 part of the invention, the use of it by the defendant was an 
 infringement of the patent. (2 Ell. & B. 69 ; 17 Jur. 1071.) 
 Campbell, C.J., in delivering the judgment of the Court, said : 
 " Where a patent is for a combination of two, three, or more old 
 inventions, a user of any of them would not be an infringement of 
 the patent ; but, where .there is an.invention consisting of several 
 
174 INFEINGEMENT : 
 
 parts, the imitation or pirating of any part of the invention is an 
 infringement of the patent." (2 Ell. & B. 76.) 
 
 (V) MOEEWOOD V. TUPPEE. [1855] 
 
 A patent was taken ont for causing sheets of metal to be passed 
 through molten zinc in such a way as to secure their complete 
 immersion. This was effected by the sheets passing between 
 rollers in contact with metal kept molten in a suitable pot. 
 Another mode was by causing the sheets to be passed under a bar 
 placed below the surface of molten metal, in combination with 
 certain guides. Quasre, whether a bar ' alone, when so placed for 
 the purpose of ensuring complete immersion by passing sheets of 
 metal under it, is the proper subject of a patent. Semhle, per 
 Parke, B., that if the patent is good for the bar alone, the use of 
 the bar by the defendants, though for a purpose different from that 
 of the plaintiff's, is an infringement. (3 C. L. Bep. 718.) 
 
 (I) BoviLL V. Keyworth. [1857] 
 
 A patent obtained for a new combination of a blast and an 
 exhaust in connection with a mill, in which only the lower stone 
 rotates, is infringed by the use of the same combination in con- 
 nection with a mill in which the upper stone rotates. (7 Ell. & B. 
 725.) Campbell, C.J., in delivening the judgment of the Court, 
 said : " Supposing the patent to be for a combination, consisting of 
 several parts, for one process, we are of opinion that the defendants 
 are liable in this action for having used a material part of the 
 process, which was new, for the same purpose as that mentioned 
 in the specification, although they did not at the same time use all 
 the parts of the process as specified." {lb. 737.) 
 
 (m) De la Ede v. Dickinson. [1857] 
 
 The specification of a patent for an invention of " improvements 
 in the manufacture of envelopes " described a machine in which a 
 piece of paper was held upon a platform whilst the flaps of the 
 envelope were folded, and concluded by claiming " the so arranging 
 machinery that the flaps of envelopes may be folded thereby as herein 
 described :" — Held, that a machine in which the flaps of an envelope 
 were folded might be an infringement of the patent, although the 
 envelope was not held down during the operation of folding. 
 
 The specification of a patent for an invention with a similar 
 title described and claimed " the application of a gum or cement to 
 the flaps of envelopes by apparatus acting in the manner of surface- 
 printing ■" — Held, that an apparatus for applying the gum might 
 be an infringement, although it acted only in part in the manner 
 of surface-printing according to the description contained in the 
 specification. (7 Ell. & B. 738; 3 Jur., N. S., 841.) 
 
 («) PiNLAY V. Allan. [1857] 
 
 An inventor patented improvements on fire-grates, of which the 
 principal feature was an overhanging door of novel construction, 
 causing a double draught. In his specification he claimed as part 
 
By WorMng or Making New and Material part of Invention. 175 
 
 of the invention secured to him by the patent " the application and 
 use " of a detent link or holder of a peculiar form to retain the 
 door in its position, but which was proved to have been previously 
 used and applied to grates without overhanging doors : — Held, that 
 the use of a similar detent link, when applied to an overhanging 
 door, but which did not produce a double draught, was not an 
 infringement of the patent. (19 Dec. of Crt. of Sess., 2nd Series, 
 1087.) 
 
 (o) Lister v. Leathee. Ex. Ch. [1858] 
 
 A valid patent for an entire combination for a process gives 
 protection to each part thereof that is new and material for that 
 process, without any express claim of particular parts, and not- 
 withstanding that ]iarts of the combination are old. (8 Ell. & B. 
 1004 : afBrmed in Ex. Ch., lb. 1031.) Williams, J., in delivering 
 the judgment of the Court of Exchequer Chamber, said : " It was 
 argued before us, on behalf of the appellants, that, if a patent be 
 taken out for a combination of a, b and c, it could not be infringed 
 by using a combination of b and c onlj'. We are of opinion that 
 the answer to this inquiry turns altogether upon what a, b and c 
 are, liow they contribute to the object of the invention, and what 
 relation they bear to each other. Cases may possibly be suggested 
 where the use of 6 and c might not be an infringement of the 
 patent ; but more easily cases may be put where the use of b and c 
 would be an infringement of the patent. Whether in this case it 
 was so or not would depend upon the facts of the case, and may 
 be more a question of fact for tbe jury than of law for a court of 
 appeal. But the facts are not before us ; and we think the court 
 below was right in deciding that the use of a subordinate part of 
 a combination might be an infringement of the patent if the part 
 so used was new (by which we understand new in itself, or in its 
 effects, not merely in its application) and material." (76. 1033.) 
 But see Harrison v. Anderston Foundry Company, inf. p. 180 (d). 
 
 (j>) The Patent Bottle Envelope Company v. Seymour. [1858] 
 
 The plaintiff obtained a patent for "improvements in the manu- 
 facture of cases or envelopes for covering bottles," and in the 
 specification the invention was stated to consist " in an arrange- 
 ment of apparatus by which lengths of rush, straw or other - 
 suitable material may be readily tied together, so as to form cases 
 or covers to protect bottles from breakage when packed." It 
 then proceeded : " For this purpose I take equal lengths of rush, 
 straw or other suitable material, and confine them at one end 
 within a ring or cap, which I then place over the neck end of a 
 mould or mandril, corresponding in form to the bottle for which 
 the case or cover is intended " : — Held, that the use of the mandril, 
 which was admitted to have been long commonly used for pro- 
 ducing given forms of pliable materials, and the application of 
 which to work previously untried materials or to produce new 
 forms, was held not to be the subject of a patent, was not an 
 infringement of the plaintiff's pateat. (5 C. B., N. S., 164; 5 Jur., 
 
176 INFEINGEMENT : 
 
 N. S., 174 ; 28 L. J., G. P. 22.) Willes, J., in delivering tlie judg-. 
 ment of the Court, said : " The infringement of any part of a 
 patent process is actionable, if that part is of itself new and useful, 
 so that it might be the subject-matter of a patent, and is used by 
 the infringer to affect the object, or part of the object, proposed 
 by the patentee." (5 G. B., N. S., 172.) 
 
 (5) Thomas v. Foxwell. [1868] 
 
 Evidence may be admitted of an infringement by an imitation 
 of a material part of a general combination, notwithstanding the 
 disclaimer of the mechanical parts separately, of which the com- 
 bination consists, and although there be no separate and specific 
 claim in respect of the part imitated, while there are separate and 
 distinct claims in respect of other subordinate combinations. The 
 jury ought not to find for the plaintiff upon the plea of not guilty, 
 unless they are convinced that the defendant has imitated a part 
 of the plaintiff's combination, both substantial and new, and for 
 the same purpose. (5 Jur., N. S., 39.) 
 
 (r) Sp^ed v. Higgins. H. L. [1860.J 
 
 The plaintiff claimed by his specification and disclaimer the 
 application of centrifugal force in the particular manner described 
 in the specification. The jjartioular manner described was by the 
 use of " a weight." The defendant employed a machine similar in 
 many respects, but, though using weight, or pre.-^sure occasioned 
 by weight, as a force, did not use " a weight " : — Held, that this 
 did not amount to an infringement of the plaintiff's patent. 
 (8 R. L. Gas. 551.) 
 
 (s) M'CoEMicK V. Gray. [1861] 
 
 A patent for a reaping machine, the several parts of which are 
 not claimed, is not infringed by the manufacture of the blade or 
 cutter similar to that described in the specification, which does 
 not of itself constitute a machine; but the patent may be in- 
 fringed by a person who subsequently makes the cutter into a 
 machine which is identical, or an imitation of the plaintiff's 
 machine. (31 L. J., Ex. 42 ; 1 H.& N. 25.) Martin, B. (duUtante), 
 said : " I think it a very arguable question whether, if a man has 
 invented a machine consisting of several parts, one of which when 
 in the machine effects a cutting purpose, it would be competent 
 for a manufacturer to manufacture that very part so as to mslke 
 any person who put it into a machine and sold it, liable to an 
 action for an infringement of the patent." (31 L. J., Ex. 47.) 
 
 (i) Lister v. Eastwood. [1864] 
 
 Where a patent is for a combination, a person who takes a new 
 and material part of the combination, but does not apply it to a 
 similar or analogous purpose to that to which it was applied in 
 the patent, does not infringe the patent. (9 L. T. Sep., N. S., 
 
 766.) 
 
By WorMng or Making New and Material part of Invention. 177 
 
 ■ (m) White v. Fenn, [1^67] 
 
 If a patent he taken out for an invention by means of a com- 
 bination, the use of a subordinate part of the combination is no 
 infringement of the patent, unless such part is new and material. 
 (15 W. B. 348 ; 15 L. T. Sep., N. S. 505.) 
 
 (®) BoviLL V. Crate. [1867] 
 
 The plaintiff's patent being for an improved method of exhausting 
 air which accumulated round millstones in grinding, the defendant 
 objected that the plaintiff was limited by his claim to exhaustion 
 by a superadded blast, and that as the defendant did not use a 
 superadded blast there was no infringement : — Held, by Wood, V.-C, 
 that as the superadded blast was not brought forward as new, but 
 the removal of the accumulated air, the defendant had no right 
 (even assuming that the patent was for a combination of using the 
 blast with drawing away the air) to take that portion of the 
 invention which would exactly effect the same thing, because he 
 could apply it to another particular form of blast. (2 Griff. 46.) 
 
 (w) BoviLL V. Smith. [1868] 
 
 This was an action for infringement of the same patent as that 
 in the preceding case. ' The defendant's apparatus could be made 
 if properly used, by means of slides, to keep the machine clear of 
 stive and damp and heat sufficiently to prevent the accumulation of 
 moisture — i.e. to produce the effect which the plaintiff produced : — 
 Held, to be an infringement. (2 Oriff. 49.) 
 
 {x) Tatham v. Dania. [1869] 
 
 The plaintiff's patent was for improvements in machinery for 
 teazing and opening textile materials, and showed the ordinary 
 toothed cylinders of a cotton hard-waste breaker machine or devil, 
 and the common feed-rollers, but the cage-roller, which in other 
 machines worked in stationary bearings, was made to rise and 
 fall and to revolve at any required speed. The only part which 
 the defendant had adopted was the mode of retarding the cage. 
 Willes, J. : In such a case, in order to show infringement, " you 
 must show that that which had been infringed and made by the 
 alleged pirate is a use in his machine of such part of that which 
 is described in the specification as could stand by itself in respect 
 of invention and in respect of use as the subject of a distinct 
 patent. ... I am satisfied that it (the retardation of the cage) 
 could not have been the subject-matter of a patent, because the use 
 of sets of rollers in a series going at different rates of 'speed for the 
 purpose of making materials not of the same kind, but of a like 
 
 kind, pass through in a form more convenient was in use 
 
 before. I apprehend that is the use of an old process applied to 
 another state of things, .... different only in the circumstances 
 and not in the species." (Griff. 213 at p. 215.) 
 
 ana not in xne Bpeuies. yyrn^. ^lo ai jj. ^i^.j 
 (jl) Paekes v. Stevens. Ch. [1869] 
 
 Action for the infringement of a patent for " i 
 
 improvements in 
 
178 INFEINGEMENT : 
 
 the manufacture of railway station and other lamps." The speci- 
 fication declared the invention to consist in the production of " a 
 glaze lamp, the frames of which shall throw little or no shadow, 
 and yet at the same time possess the requisite strength, and also 
 facilities for lighting and cleaning." The patentee claimed only 
 " the arrangement and combination of parts hereinbefore described 
 and represented in the drawings : " — Held, that the use by the 
 defendant of a sliding spherical door, which, although its advan- 
 tages were altogether collateral to the objects of the invention, 
 was a feature in the plaintiff's lamps, and described in his speci- 
 fication, was no infringement of the plaintiff's patent. (L. B., 
 8 Eq. 358 ; 38 L. J., Ch. 627.) Sir W. M. James, V.-C. : " The 
 patent being for the arrangement and combination of parts so as 
 to form an entire lamp, and not being for, or claiming to be for, 
 any particular part, the last question arises, is the introduction 
 into a lamp, which is not alleged in any other respect to have 
 adopted any part of the plaintiff's arrangement and combination 
 of a sliding door, , an infringement? The plaintiff's counsel have 
 contended that it is, on the authority of the case of Lister v. Leather. 
 
 The authority of that case has been pressed upon me as 
 
 if it really established this, which would be a most startling 
 proposition, that a patent for a combination or arrangement 
 would be a distinct patent for everything that was new and 
 material, and that went to make up the combination. The mar- 
 ginal note, if read hastily, is calculated to give some colour to 
 that contention. But if the judgment be read, it will be found to 
 give no warrant whatever for such, I must call it, baseless notion." 
 (L. B., 8 Eq. 366.) " To say that a patent for an entire combi- 
 nation is a valid patent for a part, when that part would not have 
 itself been patentable, is, in my judgment, a reductio ad absurdum 
 of the supposed principle of iisier V. ieaifter." (16.368.) Judgment 
 affirmed on appeal. (L. Bep., 5 Ch. 36.) 
 
 Hatherley, L. C, however, said : " If this door was plainly and 
 manifestly a new part, forming part of the whole combination, it 
 ought not to be taken." (J6. 39.) 
 
 (z) Weight v. Hitchcock. [1870] 
 
 The plaintiff obtained a patent " for the invention of improve- 
 ments in the manufacture of frills or ruffles, and in the machinery 
 or apparatus employed therein." The specification described the 
 invention as relating " to a peculiar manufacture of frills, ruffles, 
 or trimmings, and to a peculiar combination of mechanism to be 
 applied to a sewing machine for producing the same." The speci- 
 iication described how the fabric was folded or crimped by a 
 reciprocating knife, and the folds stitched by a sewing machine. 
 The patentee claimed — " First, the general construction, arrange- 
 ment and combination of machinery, apparatus, or means for 
 producing crimps or plaited frills or trimmings in a sewing 
 machine, as hereinbefore described. Secondly, the application 
 and use of a reciprocating knife for crimping fabrics in a sewing 
 machine, substantially as hereinbefore described. Thirdly, the 
 
By WorMng or Making New and Material jpart of Invention. 179 
 
 peculiar manufacture of crimped or plaited frills or trimmings, as 
 hereinbefore described and illustrated by figure 8 of tbe drawings : " 
 — Held, first, that the essential improvement, introduced by the 
 plaintiff, was the use of a reciprocating knife, and that the patent 
 did not apply simply to its use in combination with a sewing 
 inachine, and therefore, that the use of the reciprocating knife, 
 separately from a sewing machine, was an infringement of the 
 patent. (L. B., 5 Ex. 37 ; 39 L. J., Bxch. 97.) 
 
 (a) CAiraiNGTON B. NUTTALL. H. L. [1871] 
 
 Per Lord Westbnry : If there is a patent for a combination of 
 machinery, originally directed to one purpose, and a person after- 
 wards adopts that combination in order to make it minister to 
 another and additional purpose, his doing so constitutes an infringe- 
 ment of the patent. {L. Bep., 5 H. L. 205.) 
 
 (6) Saxby v. Clunes. [1874] 
 
 A patent not only protects the entire apparatus, but also every 
 part of it which is new and material, but if the defendant's ap- 
 paratus, although for the same object, be a new and different 
 apparatus, not copied from the plaintiff, and there is not used in 
 its construction any part of the plaintiff's apparatus which was 
 new and material, there is no infringement :■ — Seld, on the facts, 
 that the apparatus of the defendant for actuating railway points 
 or signals was not an infringement of the plaintiff's patent. (43 
 L. J., Exch. 228.) 
 
 A patent for a mechanical arrangement whereby a particular 
 operation may be performed for a particular purpose, the parts of 
 the apparatus not being new in themselves, but thus first combined 
 for that particular purpose, is not infringed by the adoption of 
 the same arrangement or combination of parts for a similar purpose 
 if the mode of operation is sufficiently distinct and different in 
 principle, and the object achieved is also sufficiently distinct or 
 novel, and does not form an essential part of the patent. (-Z6.) 
 
 (c) BiNNEY V. Feldtman. [1875] 
 
 A patentee claimed as his invention " A packing (for stuffing 
 boxes) composed of fibrous strands impregnated with powdered 
 mineral lubricant, combined with a cover of braided, woven, or 
 knitte'd fabric." The defendant used for the same purpose a 
 woven cover of fibrous material lined with one or more layers of 
 cotton wick, the central space filled with soapstone or lubricating 
 material, either dry or moist. The effect of moving the defendant's 
 packing about was that naturally the lubricant became more or 
 less absorbed into the cotton wick lining, and so produced a 
 packing practically coinciding with the description in the patent : 
 — Held, that as the claim in the patent was clearly intended to 
 cover a designed impregnation of fibrous strands before they were 
 enclosed in an outside covering, there was no infringement. The 
 ground was perfectly open and clear to any person who might 
 discover that it was better not to impregnate strands at all, but to 
 
 N 2 
 
180 INFEINGEMENT : 
 
 provide a bag with an inside surface of an absorbent description, 
 and then to fill up that bag with powder in bulk. (Griff. 49.) 
 
 (d) Harrison v. Anderston Foundry Company. H. L. [1876] 
 
 Lord Cairns, L.C. : " If it is clear that the claim is for a com- 
 bination, and nothing but a combination, there is no infringement 
 unless the whole combination is used, and it is in that way imma- 
 terial whether any or which of the parts are new. If, indeed, it 
 were left open on the specification to the patentee to claim, not 
 merely the combination of all the parts as a whole, but also certain 
 subordinate or subsidiaiy parts of the combination, on the ground 
 that such subordinate and subsidiary parts are new and material, 
 as it was held a patentee might do in Lister v. Leather (8 Ell, & B. 
 1004), then it might be necessary to see that the patentee had 
 carefully distinguished those subordinate or subsidiary parts and 
 had not left it in dubio what claim to parts, in addition to the 
 
 claim for combination, he meant to assert In the present 
 
 case, however, no question of this kind appears to me to arise. 
 The patentees claim, as I have said, for a combination under their 
 first claim, calling it ' the construction and arrangements of the 
 parts of mechanism herein distinguished, generally,' and in their 
 second, third and fourth claims they have specified the subordinate 
 or subsidiary parts to which they lay claim as novel, and the 
 specification of these subordinate or subsidiary parts appear to me 
 to exclude the possibility of a claim for any other parts as novel." 
 (i. B., 1 Ajpp. Cos. 578.) 
 
 Lord Chelmsford : "It is unnecessary for the determination of 
 this appeal to consider the propriety of this decision (Lister v. 
 Leather^ ; but I cannot forbear expressing a doubt whether it can 
 be supported. If a patent is solely for a combination nothing is 
 protected by it, and consequently nothing can be infringed but the 
 use of the entire combination." (16. 681.) 
 
 Lord Penzance: "The case of Lister v. Leather has been cited 
 and commented upon as an authority for the proposition that a 
 patent for a combination covers and protects all subordinate com- 
 binations, or parts, or at least such of them as are new and material. 
 It is plain, however, that that case did not go this length. ... It 
 decided nothing more than this, that though the patent is for a 
 combination, it does not follow that there can be no infringement 
 of it unless every part of that combination, without exception, is 
 pirated. What the Court said was, that the taking of a subordi- 
 nate part or parts of the combination might be, not that it neces- 
 sarily would be, an infringement of the patent ; and that, whether 
 it would be so or not depended, as the Court of Error said, ' upon 
 what the parts taken were, how they contributed to the object of 
 the invention, and what relation they bore to each other.' This 
 only amounts to saying that on a question of infringement the 
 essential nature of the invention will be regarded ; and that there 
 may be cases in which, though the patent is for an entire combi- 
 nation of numerous parts, a collusive imitation of that invention 
 may be effected though some detail of the combination is omitted 
 
By Working or Making New and Material part of Invention. 181 
 
 or changed, wliicli is a doctrine familiar enough in patent law." 
 (76. 593.) 
 
 (e) Clark ©. Adie (First App.) C. A. & H. L. [1875-7] 
 
 James, L. J., delivering the judgment of the Court, said : " Upon 
 the authority of Smith v. London and North Western Railway Com- 
 pany (4 Ell. & B. 69), it has been strongly contended before us, 
 that whenever there is a patent for a combination that patent gives 
 protection, not, indeed, to every distinct thing that enters into the 
 combination, but to every combination, arrangement and aggre- 
 gate of two or more of those distinct things, even although such 
 subordinate combination is not expressly or impliedly claimed in 
 the specification. 
 
 " This, in our opinion, is so startling a violation of every prin- 
 ciple of patent law, that we doubt whether we could follow any 
 authority short of the House of Lords in applying such a doctrine. 
 If a patent for a combination of several parts is in reality a patent, 
 and gives really a monopoly for every combination of any two or 
 more of those parts, then it follows, from the first principle of 
 patent law, that if any conceivable combination of any two or 
 more parts was old the patent would be bad. On the other hand, 
 if the patentees say, ' No, we do not claim to protect every combi- 
 nation of those parts, but only those subordinate combinations or 
 parts of the combination which are new and useful,' then such a 
 claim would be entirely inconsistent with the leading case of 
 FoxweU V. JBostoch (12 W. iJ. 723), which, we may be permitted to 
 
 say, is as good sense as it is sound and intelligible law I 
 
 will state what we conceive to be the real principle which under- 
 lies the case of Lister v. Leather (8 E. & B. 1004), and which 
 reconciles it with the other cases and with general principles and 
 common sense. A patent for a new combination or arrangement 
 is to be entitled to the same protection, and on tlie same principles, 
 as every other patent. In fact, every, or almost every, patent is 
 a patent for a new combination. The patent is for the entire 
 combination, but there is, or may be, an essence or substance of 
 the invention underlying the mere accident of form; and that 
 invention, like every other invention, may be pirated by a theft in 
 a disguised or mutilated foi-m, and it will be in every case a 
 question of fact whether the alleged piracy is the same in substance 
 
 and effect, or is a substantially new or different combination 
 
 If a man really wants to patent, not only the whole but some- 
 thing less than the whole of what he calls ' a new arrangement, 
 construction and combination of parts,' he must clearly show 
 that he claims that something less — of course periling his patent' 
 if that something less is not a novelty." (L. B., 10 Gh. 674.) 
 
 On appeal to the House of Lords, Lord Blackburn said: "I 
 incline to agree with what was said by the Exchequer Chamber in 
 the case of Lister v. Leather, that you cannot decide in the abstract 
 whether the using of two parts, A and B, of a combination of A, 
 B and C, is or is not using part of that invention, nor can you 
 decide in the abstract the other question which was somewhat 
 
182 INFEINGEMENT : 
 
 discussed in the case of the sewing-machine (Foxwell v. Bostock^i 
 whether or no the specification shows that A or B is sufficiently 
 claimed as a part of the invention or not." (L. B., 2 App. C. 335.) 
 
 (e) Henderson v. Clippens Oil Company. H. L. [1883] 
 
 The specification described an improved apparatus for distillation 
 of shale so as to utilise the spent shale as fuel :■ — Held, that assuming 
 that the use of a common fire chamber was involved in the second 
 claim, yet that it did not form an essential part of the first claim, and 
 that therefore an arrangement of apparatus, which was substantially 
 the same as that patented, except that no common fire chamber was 
 used, was an infringement. (20 Seott. Law Beporter, 423.) 
 
 (/) Young v. Eosenthal. [1883-4] 
 
 Infiingement and novelty are two quite distinct issues ; but 
 you must administer the same measure against the plaintiff on the 
 issue of novelty as you do in his favour on that of infringement. 
 Thus, if the patentee alleges that the defendant has " substantially " 
 infringed his patent by using slightly curved instead of straight 
 lines in seams for corsets, then slightly curved lines made and 
 used before the patent would be an anticipation of the invention. 
 (Griff. 249, 1 0. B. 29.) 
 
 (gr) Davis v. Feldman. C. A. [1884] 
 
 In an action for infringement, if the Court finds that the 
 process which is alleged to be an infringement is substantially 
 similar to a process described in a prior publication, which is 
 alleged to be an anticipation of the plaintiff's patent, the plaintiff 
 is in a dilemma, for if he shows that his patent is wide enough to 
 include the alleged infringement, then the anticipation is estab- 
 lished. (Griff. 76, 1 0. B. 13, 193.) 
 
 (K) DowNES V. Falcon Esgine and Car Works. C. A. [1886] 
 
 In an action for infringement of a patent for improvements in 
 steam engines the patent contained three claims. The first claim 
 might be made to claim the mode of condensing steam by passing 
 it through water in a tank, and if so the patent was held to be 
 invalid for want of novelty, or it might only claim what was in 
 the second and third claims, in which case it was found that there 
 was no infringement. (Griff. 77, 2 0. B. 197, 3 0. B. 70.) 
 
 (€) United Telephone Company v. Nelson. [1887] 
 
 The putting in of new carbons in a tension regulator, which 
 formed an essential part of the combination protected by the plain- 
 tiff's patent, is an infringement of the patent. (W. N. 1887, 193.) 
 
 (j) Ellington v. Clark. C. A. [1888] 
 
 In an action for infringement of a hydraulic balance lift, con- 
 sisting of a combination partly old, but in which the counter- 
 balance was effected in a new way by water pressure, it appeared 
 that the defendants used a similar combination, but the counter- 
 balance was effected, as previously, by gravity : — Held, that the 
 
By Colourable Imitation. 183 
 
 defendants had infringed by taking the essential part of the in- 
 vention with the mechanical equivalents of the remainder, but on 
 appeal held that there had been no infringement. (5 0. B. 319.) 
 
 Qc) Hocking and Comp v. Hocking. H. L. [1888] 
 
 The House of Lords approves the principle that a grantee should 
 not defeat his own grant, but that consideratioli should not be 
 allowed to alter the construction of the specification. In an action 
 for infringement by assignee against assignor of a patent for an 
 improved apparatus for heating liquids applicable as a condenser : 
 — Held, as the patentee disclaimed the annularity of the steam and 
 water spaces, and also their arrangement in an alternate and con- 
 centric series ; and as it was shown that the opposite motion of 
 steam and water was old, and the original claim so far as relating 
 to it had been deleted, that the invention must be confined to the 
 particular forms shown in the drawings : — Held, further, that one 
 of the characteristic features of the patented form was the relative 
 proportions between the cubic areas of the steam and water spaces 
 which enabled the action of the machines to be reversed, and 
 that as that feature was not to be found in the defendant's apparatus 
 there was no infringement. (6 0. B. 69.) 
 
 Q) Gaueaed v. Edge. C. A. [1889] 
 
 The plaintiff's invention, which was for improvements in presses 
 for pressing roof tiles, consisted roughly of three items — the 
 reversibility of the top plate of the press, the reversibility of the 
 bottom plate, and the reversibility of the box. The defendant 
 had manufactured dies with boxes which were reversible, and had 
 also diminished the size of the carrier of the bottom plate for the 
 same purpose and reason as the plaintiff had : — Held, that there 
 was not a taking of such a substantial portion of the combination 
 as would amount to an infringement. (6 0. B. 372, 563.) 
 
 Colourable Imitation — Equivalent — Evasion. 
 
 (m) BoviLL V. MooRE. N. P. [1816] 
 
 A person who uses the same means in substance as a patentee 
 of a machine, though the form of the machine be different, commits 
 an infringement. It will be the same in substance if the principle 
 be the same in effect. Eeferring to this, Gibb, C.J., said: "I 
 remember that that was the expedient used by a man in Cornwall, 
 who endeavoured to pirate the steam-engine. He produced an 
 engine, which, on the first view of it, had not the least resemblance 
 to Boulton and Watts' : — where you looked for the head, you found 
 the feet, and where you looked for the feet, you found the head ; 
 but it turned out that he had taken the principle of Boulton and 
 Watts' engine." (Bav. P. G. 406.) 
 
 (m) Hill v. Thompson. [1818] 
 
 Dallas, J., delivering the judgment of the Court of Common 
 Pleas, said: "A slight departure from the specification for the 
 
184 INPEINGEMENT: 
 
 purpose of evasion only, would, of course, he a fraud upon the 
 patent ; and, therefore, the question will be, whether the mode 
 of working by the defendant has, or has not, been essentially or 
 substantially different." (1 Web. P. G. 242; 8 Taunt. 391; 
 2 B. Moore, 448.) 
 
 (o) Forsyth v. Kiviere. N. P. [1819] 
 
 Action for the infringement of a patent for the application of 
 detonating powder to the discharge of firearms. Drawings were 
 annexed to the specification "exhibiting several constructions (of 
 locks) which may be made and adopted, in conformity to the fore- 
 going plan and principles, out of an endless variety which the 
 subject admits of." The defendant applied the principle of the 
 invention by using a lock of a different construction from any shown 
 in the annexed drawings. Verdict for the plaintiff. (1 Web. P. C. 
 97 ; 1 Carp. P. G. 401.) 
 
 (jp) Webster v. Uthee. [1824] 
 
 Action for the infringement of a patent for an improvement on 
 the patent percussion gun-lock, by the addition of a bolt, sliding 
 or moving in a groove, by which the roller magazine was then 
 fixed, that had formerly been fastened by a screw and washer ; 
 the defendant's look had a spring in the bolt, and the jury, upon 
 the evidence of mechanics that a spring in a bolt was the same 
 thing as a bolt sliding in a groove, found that there had been an 
 infringement. (Gods. Pat. Law, 232.) 
 
 (q) E. V. Lister. [1826] 
 
 The application of steam to heat iron roUers is an infringement 
 of a patent in which hot irons were inserted into hollow roUers, 
 the final process in both being the same, viz., the applying heat 
 to the fibres of wool during the operation of spinning it, by making 
 the slivers pass between the rollers so heated. (Web. P. L. 80.) 
 
 (r) Cochrane v. Braithwaite. N. P. [1830] 
 
 The essential part of an invention being that a necessary degree 
 of compression should be produced in a quantity of air :• — Held, 
 that if this could be effected by narrowing the outlet as well as 
 by a weighted valve, both were covered by the words " any other 
 known means of producing the required resistance." (3 Lond. 
 Jour., G. S. 42.) 
 
 (s) Minter v. Wells. N. P. [1834] 
 
 The invention claimed being the application of the self-adjusting 
 leverage to the back and seat of a chair, any application of that 
 to the same subject is an infringement. (1 Weh. P. G. 130.) 
 
 (t) EussELL V. Cowley. N. P. [1834] 
 
 The specification having described the invention to consist 
 in welding iron in the manufacture of tubes by circular pressure 
 through dies or holes, the welding produced by passing the iron 
 through grooved rollers, though not so perfect, is an infringe- 
 ment. (1 Web. P. G. 463.) 
 
By Cohnrdble Imitation. 185 
 
 («) MouGAn V. Seaward. N. P. [1836] 
 
 Alderson, B., in summing up tlie case to the jury, said : 
 " Upon that subject (infringement) the question would be 
 simply, whether the defendant's machine was only colourably 
 different, that is, whether it differed merely in the substitution 
 of what are called mechanical equivalents for the contrivances 
 which are resorted to by the patentee. . . . You are to 
 look to the substance and not to the mere form, and if it is in 
 substance an infringement, you ought to find that it is so. If 
 in principle it is not the same, but really different, then the 
 defendants cannot be said to have infringed the patent." (1 
 Weh. P. a 171.) 
 
 («) JuPE V. Pratt. [1837] 
 
 Alderson, B. : " You may take out a patent for a principle 
 coupled with the mode of carrying the principle into effect, 
 provided you have not only discovered the principle, but in- 
 vented some mode of carrying it into effect. But then you 
 must start with having invented some mode of carrying the 
 principle into effect ; if you have done that, then you are 
 entitled to protect yourself from all other modes of carrying the 
 same principle into effect, that being treated by the jury as 
 piracy of your original invention." (1 Weh. P. G. 146.) 
 
 (w) Walton v. Potter. N. P. [1841] 
 
 A specious variation in form, or ingenious alteration in the 
 mode of adaptation, is an infringement of a patent. Tindal, 
 C. J., in summing up the case to the jury, said : " Where a 
 party has obtained a patent for a new invention, or a discovery 
 he has made by his own ingenuity, it is not in the power of any 
 other person, simply by varying in form or in immaterial cir- 
 cumstances the nature or subject-matter of that discovery, to 
 obtain either a patent for it himself or to use it without the 
 leave of the patentee, because that would be in effect and in 
 substance an invasion of the right; and therefore, what you 
 have to look at upon the present occasion is, not simply whether 
 in form or in circumstances, that may be more or less imma- 
 terial, that which has been done by the defendants varies from 
 the specification of the plaintiff's patent, but to see whether 
 in reality, in substance, and in effect, the defendants have availed 
 themselves of the plaintiff's invention in order to make that 
 fabric, or to make that article which they have sold in the way of 
 their trade." (1 Web. P. C. 686.) 
 
 {x) Neilson v. Harford. N. P. [1841] 
 
 Action for the infringement of a patent for the improved 
 application of air to produce heat in furnaces. Parke, B., told 
 the jury that if the invention consisted, as claimed by the 
 plaintiff, ia applying the air, heated while in transitu, then, 
 however great the improvement which the defendant's appa- 
 
186 INFEINGEMENT: 
 
 ratus for accomplishing that object . may be on that described 
 in the specification, it is no less an infringement. (1 Web. P. G. 
 310.) 
 
 (x) Neilson v. Thompson. 
 
 Cottenham, L.O. : " The specification must tell the public for 
 what it is that he (the patentee) claims protection. If it be for a 
 principle, then if that be good it will apply to every mode in which 
 that principle can be carried into operation. If for a machine for 
 a particular mode of carrying into effect an old principle, that does 
 not go beyond the machine." (1 Web. P. G. 283.) 
 
 (y^ WaltolV v. Bateman. N. P. [1842] 
 
 Cresswell, J., in speaking of the plaintiff's invention, said : 
 " The defendants are not to resemble or counterfeit ; they are 
 not to make any addition to, or any subtraction from, it ; avail- 
 ing themselves of that which is in truth the subject-matter of 
 his patent ; so as by such alteration to pretend that they are the 
 true inventors of that article." (1 Web. P. G. 616.) 
 
 (2) MuNTZ 'D. Foster. N. P. [1844] 
 
 Action for the infringement of a patent for " an improved 
 manufacture of metal plates for sheathing the bottoms of ships." 
 The patentee described his invention as consisting in making 
 the said plates of an alloy of " foreign zinc," and of " best 
 selected copper ; " the metals being melted together in certain 
 stated proportions. Tindal, C. J., said to the jury that " although 
 ■the patent describes the copper must be of the purest quality, 
 yet, if persons could take an inferior kind of copper, and by 
 dressing it up, and by some particular way of melting and re- 
 fining it, give it exactly the same effect as the best kind of 
 copper would have done, it must be for you to say whether in 
 that case they intended to imitate and to evade the patent which 
 the other party had granted to him." (2 Web. P. 0. 101.) 
 
 Lord Lyndhurst, L.O., upon the same point, said : " The analysis 
 proves that that compound (the metal manufactured by the 
 defendants) consists, not of ordinary copper and zinc, but of 
 those minerals in their greatest purity, and in the proportions 
 recommended in the plaintiff's specification. If they were 
 originally combined in this state the evasion is plain and direct. 
 If they were purified in the course of this process, this, I think, 
 would constitute a colourable evasion of the plaintiff's invention." 
 (lb. 95.) 
 
 (a) Heath v. Unwin. [1845] 
 
 Parke, B., in delivering the judgment of the Court, said : 
 " There is no doubt, we think, if a defendant substitutes for a 
 part of a plaintiff's invention some well-known equivalent, 
 whether chemical or mechanical, he would probably be con- 
 sidered as only making a colourable variation." (2 Web. P. G. 
 227.) 
 
By Colourable Imitation. 187 
 
 '(b) KussBLL V. Ledsam. [1845] 
 
 Letters patent may be infringed by a method which is an 
 improvement upon the patentee's invention, provided the two 
 methods are, in a material part, the same. (14 M. & W. 580.) 
 
 (c) Gamble v. Kuetz. [1846] 
 
 Action for the infringement of 'a patent for " improvements in 
 apparatus for the manufacture of sulphate of soda," &c. The 
 plaintiff, in his claim, said : "I do not claim the exclusive use 
 of iron retorts, but I do claim, as my invention, iron retorts 
 vv^orked in connection with each other, as above described." 
 The defendant had used two chambers, one of iron, and one of 
 brick, connected by an opening through which the material 
 could be pushed from one into the other : — Held, that there was 
 an infringement. (3 G. B. 425.) Coltman, J., delivering tlie 
 judgment of the Court of Common Pleas, said : "The essence 
 of the plaintiff's improvement in making sulphate of soda was 
 the use of two chambers, with separate furnaces, for the two 
 stages of the process ; so that both could be kept in action at 
 the same time, at the different temperature required for each 
 stage ; and that principle is equally acted upon, and the same 
 advantage gained, whether both chambers are of iron, or one is 
 of iron and one of brick." (lb. 435.) 
 
 (d) Stead v. Anderson. [1847] 
 
 The use of the plaintiff's invention with slight immaterial 
 variations to make a colourable difference, or for any other pur- 
 pose, is an evasion of the patent. (2 Web. P. G. 156.) 
 
 (e) Barber v. Grace. .. [1847] 
 
 The specification of a patent for " improvements in the process 
 of finishing hosiery and other goods manufactured from lamb's 
 wool," &c., stated the invention to consist in submitting hosiery 
 and other similar goods to the finishing process of a press heated 
 by steam, &c., in the manner hereinafter mentioned. After describing 
 the method of pressing the goods between boxes heated by steam, 
 the specification concluded by confining the inventor's claim to the 
 process as above described : — Seld, that a method of finishing hosiery 
 goods, by passing them through heated rollers, was not included 
 in this patent, and therefore was no infringement of it. (1 Exch. 
 339 ; 17 L. J., Ex. 122.) 
 
 (/) Stevens «. Keating. N. P. [1847] 
 
 Action for the infringement of a patent for the manufacture of 
 cements. The specification states the invention to consist in pro- 
 ducing certain hard cements of the combination of the powder of 
 gypsum, powder of limestone and chalk, with other materials, such 
 combinations being (subsequent to the mixing) submitted to heat. 
 The specification then describes the method of making cement from 
 gypsum, in the course of which alkali (for instance, best American 
 
188 INFKINGEMENT : 
 
 pearlash) is to be used, and is to be neutralized witli an acid 
 (sulpliurio acid is stated to be the best) ; the result is to be sub- 
 jected to heat. The patentee claimed " the processes of mixing 
 the powdered materials, alkalies, and acids, as hereinabove de- 
 scribed," &c. The defendant manufactured cement by combining 
 gypsum with borax, and subjecting the whole to heat. It was in 
 evidence that borax is composed of an acid and an alkali : — Held, 
 by Pqllock, C.B., that there was sufficient evidence of infringe- 
 ment. (2 Web. P. G. 181.) His lordship told the jury that " if 
 it had turned out that they (the defendants) had, by the use of 
 borax, produced a substance very superior indeed, I think it would 
 have been a fair question for the jury to consider, whether that 
 was a colourable imitation or evasion, or whether it was a person 
 travelling in his own direction, and making discoveries in the field 
 that was not closed against him." (Ih. 186.) 
 
 (g) The Electric Telegraph Company v. Brett. [1851] 
 
 Action for the infringement of a patent " for improvements in 
 giving signals and sounding alarums in distant places, by means 
 of electric currents transmitted through metallic circuits." The 
 defendant arrived at the same result by using a circuit not wholly 
 or continuously metallic throughout, but by using the earth, to an 
 extent nearly amounting to the half, as the connecting medium 
 between two portions of the metal. It appeared in evidence, that 
 after the grant of the letters patent, it had been discovered that a 
 large portion of the wire through which the electric current 
 returned to the battery might be dispensed with by plunging into 
 the earth the two ends of wire which would have been joined by 
 the parts left out, the electric current passing from one end of the 
 wire to the other as effectually as if a continuity of wire had 
 been kept up : — Seld, that though a circuit upon this principle 
 would not be wholly metallic, yet, inasmuch as it was so in all that 
 part which formed the substance of the patentee's claim, viz., that 
 part which gave the signals, it amounted to an infringement of 
 the plaintiffs' patent. (10 G. B. 838 ; 15 Jur. 579 ; 20 L. J., G. P. 
 123.) 
 
 (h) Hancock v. Moulton. Ch. [1852] 
 
 On an application to the Court of Chancery for an injunction to 
 restrain the manufacture by the defendant of vulcanized or cured 
 xjaoutchouc, alleged to be an infringement of the plaintiffs' patent, 
 it appeared that this patent was for obtaining a certain useful 
 product by subjecting a mixture of sulphur and caoutchouc to heat. 
 The mixture was first made mechanically, and then, by the 
 operation of heat, the character of the caoutchouc was changed, 
 so that it ceased to be liable to stiffen from cold. It was not 
 decomposed by heat, and it was improved in elasticity. The 
 patent extended to the incorporation of sulphur, and of sulphur 
 only, with the caoutchouc by means of heat. The defendant 
 subsequently obtained a patent for the combination of hypo- 
 sulphate of lead and artificial sulphuret of lead with caoutchouc ; 
 
By Colourable Imitation. 189 
 
 ttat combined mass, acted upon by Heat, was alleged by the 
 defendant to produce more beneficial results, but the results were 
 of the same character as those which were produced by the plain- 
 tiffs' invention. Turner, V.-C. : "Assuming the materials thus 
 used by the defendant to be diflferent, the process of the defendant 
 would per se be no infringement of the plaintiffs' patent. The 
 plaintiffs confine their patent to sulphur ; the defendant had used 
 hyposulphate of lead and artificial sulphuret of lead. It was said 
 that the hyposulphate and sulphuret of lead do not of themselves 
 produce the change, but that the change is produced by the 
 sulphur which they contain, and which forms one of their several 
 constituent parts ; and that those parts being decomposed by heat, 
 the sulphur combined with the caoutchouc and left a residuum of 
 lead, which had no operation in the change which was effected. 
 If the qualities conferred upon the caoutchouc by the process 
 were imparted by the sulphur, it would no doubt be an infringe- 
 ment of the plaintiffs' patent." (Johnson's Patentees Manual, 3rd ed. 
 p. 208.) 
 
 (i) Bateman v. Gray. N. P. [1863] 
 
 Action for the infringement of a patent for " certain improve- 
 ments in valves or plugs for the passage of water or other fluids." 
 
 Martin, B., in summing up to the jury, said : " If you believe 
 that the defendant's instrument, though he might have employed 
 skill and knowledge upon it, was taken by him substantially from 
 the plaintiff's, and that what he has produced is nothing more 
 than a substitution of other and equivalent means for producing 
 the same end, even though the means employed might be better 
 than those of the plaintiff's, it is my duty to tell you that that is 
 an infringement of the patent. If that were not the law no patent 
 would be safe, for a patentee is forced to produce to the public a 
 specification of his invention, and be has had no opportunity of 
 testing it so as to point out every application of it for public use." 
 (Mac. P. a 102.) 
 
 (j) Unwin v. Heath. H. L. [1855] 
 
 A. obtained a patent for certain improvements in the manufacture 
 of iron and steel, described as consisting in " the use of carburet of 
 manganese in any process whereby iron is converted into cast 
 steel " ; the specification directed the unfused carburet of manga- 
 nese to be put into the pot containing the steel in a fused state. 
 The patentee claimed as his invention "the use of carburet of 
 manganese in any process for the conversion of jron into cast 
 steel." B. manufactured cast steel by placing oxide of manganese 
 and carbonaceous matter into the po± at the same moment as the 
 steel. Evidence was given that carburet of manganese would be 
 formed by the combination of these substances before the steel 
 was melted. They produced the same effect upon the steel as the 
 carburet of manganese, at a cheaper rate. This method of pro- 
 ducing the effect was not known at the time of taking out the 
 patent : — Held, that this was a new invention, and not an infringe- 
 
190 INFEINGEMENT : 
 
 ment of the patent. (5 H. L. Cos. 505 ; 16 C. B. 713 ; 25 L. J.^ 
 G. P. 8.) 
 
 Crompton, J., in. delivering judgment in the Exchequer Chamber, 
 said : " The discovery of the new mode of making the carburet in 
 the pot, in the course of the process, so as to be ready to alloy 
 with the steel ia a subsequent part of the process, may have 
 been a discovery and an improvement on the plaintiff's invention, 
 for which a patent might perhaps have been taken out, and, if 
 taken out by a stranger, the plaintiff could not have used the new 
 method without infringing tlie patent for the improvement. On 
 the other hand, the new method could not in such case have been 
 carried on without infringing the plaintiff's patent, if, as I think, 
 it was an improved and neater mode of bringing the two substances 
 together." (22 L. J., C. P. 10.) 
 
 Coleridge, J., in delivering judgment in the same Court, said : 
 " There can be no doubt, I think, that an equivalent has been used. 
 If that equivalent were known at the date of the specification to 
 the plaintiff or ordinary chemists — those, I mean, who would 
 bring to the reading of the specification such knowledge as must be 
 presumed in those to whom the patent must be taken to be addressed 
 — then it is within the specification, and the use of it is an infringe- 
 ment. If not, the contrary conclusion follows, and the use of it is 
 an improvement, in virtue of a new discovery. . . . Whether 
 the equivalent be in its nature near to or remote from the thing 
 itself, seems to be in principle wholly immaterial, and equally so 
 that the one should be so nearly identical with the other, as that 
 the one should be the component parts and the other the composite 
 substance." (lb. 13.) 
 
 The Judges, in answering the question. put to them by the House 
 of Lords, differed as to the question of infringement. 
 
 Crowder, J. : " The process of the plaintiff in error is an 
 improvement upon the invention of the defendant in error (the 
 patentee), while at the same time it is an infringement of his 
 patent." (25 L. J., C. P. 11.) 
 
 Williams, J. : " Though the use of a chemical or mechanical 
 substitute, which is a known equivalent to the thing pointed out 
 by the specification and claimed as the invention, amounts to an 
 infringement of the patent, yet if the equivalent were not known 
 to be so at the time of the patent and specification, the use of it 
 is no infringement If a patent is taken out for the appli- 
 cation of a principle, coupled with a mode of carrying the principle 
 into effect, the patentee is entitled to protection from all other 
 modes of doing so, whether known or not known at the time of 
 the specification." (lb. 13.) 
 
 Erie, J. : "I am of opinion that a patent for the use of a substance 
 in a process is infringed by the use of the elements of that sub- 
 stance known to be equivalent thereto at the time of the use, if 
 used for the purpose of taking the benefit of the patent and 
 
 of making a colourable variation therefrom If the 
 
 discovery had been made after the patent, that carbon and man- 
 ganese were elements of the carburet, equivalent to the carburet 
 
By Colourable Imitation. 191 
 
 of manganese in the patented process, the use of those elements in 
 that process for the purpose of being equivalent to the carburet, 
 would, in my judgment, be a colourable variation and an infringe- 
 ment." (lb. 15.) 
 
 The Lord Chancellor said that judgment ought to be for the 
 defendant on the short ground that the invention claimed was 
 for the use of a particular substance, whereas the defendant had 
 used two other substances of a cheaper kind, the use of which for 
 the same purpose was not known when the patent was obtained. 
 (lb. 21.) 
 
 (F) BoviLL V. Pimm. [1856] 
 
 In 1844, Gr. obtained a patent for "improvements in grinding 
 wheat and other grains." He described as his invention "the 
 forcing and distributing of atmospheric air from the eye or centre 
 of mill-stones, for the purpose of cooling the grain during the 
 process of grinding ; " this was effected by an air-box placed 
 below the mill-stones, into which air was forced by the rapid 
 rotation of a fan or blower, which caused a current of air perpen- 
 dicular to the axis of the fan ; and the air was conducted by a 
 pipe through the eye of the lower stone to the centre of the two 
 stones, and there distributed between them by an apparatus pro- 
 vided with fans or arms. In 1846, the plaintiff obtained a patent 
 for " improvements in manufacturing wheat and other grain into 
 meal and flour." His invention consisted in the application of 
 ventilating vants or screws at the centre of the stones for supplying 
 the air between the grinding surfaces ; a portable ventilating 
 machine, blowing by a screw vane, which caused a current of air 
 parallel to the axis of the vane, was attached externally to the eye 
 of the upper mill-stone; the screw vane being set in rapid raotion, 
 the air was compelled to pass through the eye into the centre of 
 the two stones, and so find its way out between them. In 1851, 
 the defendant obtained a patent for " improvements in grinding 
 wheat," and his plan was to remove from the centre of both stories 
 a large circular portion of each, and in this space, opposite to the 
 Reparation of the two stones, to place a fan or blower, by the rapid 
 rotation of which a centrifugal motion was given to the air, and 
 it was driven between the stones : — Seld, that the defendant's in- 
 vention was no infringement of the plaintiff's, but that each was 
 a new method of accomplishing a well-known object, viz., the 
 cooling grinding substances by the common principle of obtaining 
 a current of air by a rotating vane. (11 Hxch. 718.) 
 
 Pollock, C.B., in delivering the judgment of the Court, said : 
 " Where a subject is not new, as this certainly was not, viz., ' the 
 cooling of substances undergoing the process of grinding' (which 
 had been long known to be a desideratum in grinding, and to effect 
 which various contrivances had been adopted, and several, if not 
 many, patents taken out), any patent taken out for a method of 
 performing the operation is substantially confined to that method, 
 and cannot be extended to other methods obviously different, be- 
 cause they involve some common principle applied to the common 
 
192 INFEIN6EMENT: 
 
 olDJeot, and may apparently be described by the same general" 
 phrase." (16. 739.) 
 
 (I) Simpson v. Holliday. Ch. [1864] 
 
 If a patentee claims as his invention the mixing of two chemi- 
 cal substances, and boiling them together, to produce a certain 
 result; and the same result is arrived at by mixing the two 
 substances together in the presence of a third body, without 
 boiling, that would be an infringement. (20 Newt. Lon. Journ., 
 N. S. 111.) 
 
 (jb) Needham v. Oxley. Ch. [1865] 
 
 Where a patentee has been led up to the invention of his 
 patented machine, by an idea thrown out by a previous patentee 
 of a machine for the same purpose, but arrives at a similar result 
 by another and different mode, there is no infringement. (21 
 Newt. Lon. Jour., N. S. 300.) 
 
 (n) Curtis v. Platt. H. L. [1866] 
 
 Held, afSrming the judgment of the Lord Chancellor, that 
 a patent for an entire combination is not infringed by a dif- 
 ferent combination, for the same object, of the same elements, 
 though important, or of equivalents for them, if not a mere 
 colourable evasion or imitation. The principle which protects 
 a patentee, against the use by others of mechanical equivalents 
 is inapplicable to a case where the whole invention depends 
 entirely on the particular machinery by means of which a 
 well-known object is attained. (35 L. J., Ch. 852.) The 
 Lord Chancellor, in delivering his judgment in the court 
 below, said : " If the invention be, as I have already described, 
 nothing in the world more than a particular means to attain to 
 a given result which is perfectly well known, then the invention 
 is for the means, and you can no more prevent the invention of 
 one distinct set of means being interfered with — you can no 
 more say that it interferes with the invention of another, than 
 you could say originally that there ought not to be patents 
 granted for the invention of distinct means to an end." (11 L. T. 
 Bep. N. S. 249.) 
 
 (o) MuEEAT V. Clayton. Ch. [1872] 
 
 A clumsy imitation of a patented machine, or a patented 
 article, may be an infringement, although it is not such as 
 would have been an anticipation defeating an inventor's right 
 to a patent. Decided on the authority of Daw v. Eley. (L. 
 Bep., 7 Ch. 585.) 
 
 (p) Johnson v. Eylands. [1873] 
 
 Action for infringement of a patent for improvements in testing 
 the strength of wire for telegraphic and other purposes. The 
 invention consisted of two drums, g and i ; the wire from a reel 
 was carried to drum i, and coiled several times round it, and was 
 then carried to drum g, which was driven at a higher surface 
 
By Golowrahle Imitation. 1&3 
 
 speed than drum i. The alleged infringement consisted in the 
 use of two drums and the passing of wire over them, so as to take 
 the kinks out, the second drum heing retarded by a clip so as not 
 to go as fast as the first ; the wire pulled round the second drum 
 being gathered up on the first. The defendant had used this 
 method before the date of the plaintiff's patent, but not for the 
 purpose of testing the strength : — flisZd, that there was no infringe- 
 ment. Blackburn, J. : " Inasmuch as the front wheel which gathers 
 up the defendant's wire (which must necessarily be subjected to 
 strain and to expansion) must gather up a greater length of wire 
 than that which travels over the other drum behind, your front 
 wheel must travel quicker than your second, which is true, and it is 
 said that any means by which you retard the other wheel which 
 receives the wire first is a ' mechanical equivalent ' for the 
 machinery in the plaintiff's machine, by which it was secured 
 that the first should travel quicker than the second. That phrase, 
 ' mechanical equivalent,' according to my experience in patent 
 cases, is always used when a man intends to disguise something else 
 which he cannot clearly express in any 6ther way. But I do not 
 think that this can be said in any sense to be a mechanical equiva- 
 lent. In the one case the relative motion of the wheels is the 
 cause of the wire expanding instead of being the eifect." {Griff. 138.) 
 
 (g) Thoen v. WoETHme Skating Eink Company. M. E. [1876] 
 
 Jessel, M.E., in delivering judgment, said : " The question 
 I have to decide is, whether the defendant's skate is, in sub- 
 stance, an infringement of the plaintiff's I take it 
 
 this is the first test. Is it so like the patented thing that your 
 mind is not directed in the first instance to dissimilarity, but 
 to similarity? In other words, have you to examine it very 
 carefully to find any distinction or difference ? If that is the 
 real position of the matter, prima facie it is an infringement ; 
 not necessarily so, because you may, on examination, find that 
 what you had overlooked in the first instance was really so 
 essential and important a part of the invention, that you ought 
 to decide at once that it is not an infringement. Then, having 
 arrived at that conclusion on the inspection, the next thing is 
 to see what really has been done. In one sense, what has been 
 done is undoubtedly a mechanical equivalent ; but whether it 
 is a mechanical equivalent in the sense in which that expression 
 is used in patent law is, of course, the question I have to decide." 
 (L.B.. 6 Ch. D.417 (w).) 
 
 (r) Claek v. Adie (First App.). H. L. [1877] 
 
 Lord Hatherley : " The case of Seed v. Riggins (8 H. L. 
 Gas. 550) is one which I have always thought exceedingly 
 illustrative of the great difficulty which patentees are put 
 to. . . . There the plaintiff was put to this extraordinary 
 difficulty : He first claimed an improvement by using centri- 
 fugal force in the winding of bobbins. He then found that, 
 having been anticipated as to the use of centrifugal force, he 
 
 
 
194 INFEINGEMENT : 
 
 could only claim in respect of a certain weight, which was 
 moved by centrifugal force in a given position, and he dis- 
 claimed all but that weight. When another person sought to 
 substitute what was a mechanical equivalent for the weight (it 
 was not applied in exactly the same place or the same position, 
 but the effects were almost the same), the Court came to the 
 conclusion that the very disclaimer itself showed that the 
 plaintiff was only claiming the exact thing which was left open 
 to him by the numerous otlier patents which had been taken 
 out for the application of centrifugal force ; and that, although 
 the defendant had come as near as could be conceived to 
 infringement, yet he had not actually violated or infringed the 
 patent, because the patent must be confined very strictly to what 
 was expressed in it — that is to say, very strictly to the application 
 of the weight there mentioned." (L. B., 2 App. Cos. 332.) 
 
 (s) Flower v. Lloyd. C. A. [1877] 
 
 Action for the infringement of a patent for improvements in 
 the method and process of printing on tin plates, and in fur- 
 naces or ovens for heating or drying printed tin plates. It was 
 contended for the plaintiffs that the specification claimed a 
 combination of four processes, old in themselves, but from 
 which a marketable product was for the first time obtained. 
 The combination was said to consist of (1) printing from 
 raised surfaces with heat-resisting inks ; (2) drying in an oven 
 of a particular kind; (3) varnishing; and (4) final heating. 
 The defendants were charged with employing three of these 
 processes and making only a colourable imitation of the fourth. 
 The defendants alleged that the plaintiff's patent was not for a 
 combination, but for a dry process of printing, whereas they 
 had employed the old and well-known process of printing from 
 damp lithographic stones. It was also shown that although, 
 as a last step i.n the manufacture, they varnished the tin plates 
 and put them again into an oven, this oven was not the plain- 
 tiff's improved oven or anything like it : — Held, reversing the 
 judgment of V.-C. Bacon (W. N. 1877, p. 71), that in order 
 to constitute an infringement of a patent for a combination 
 there must be an infringement of the whole combination, 
 not in the sense that every step of the combination must be 
 adopted, but that there must be an adoption of that which con- 
 stitutes the essence of the combination. In this case the process 
 of the defendants differed from that of the plaintiffs in every step, 
 except that, after the plates had been printed and baked, they 
 varnished them and replaced them in an oven, but in an oven 
 of a different construction from that employed by the plaintiffs. 
 Moreover, that this was a well-known process which could not, 
 on a fair construction of the plaintiffs specification, be con- 
 sidered as any part of what constituted the essence of the 
 combination protected thereby. {W.N. 1877, p. 132; Johnson's 
 P. M., 4:th ed., p. 246.) The plaintiffs afterwards tried to set aside 
 the judgment on the ground that the defendants had fraudulently 
 
By Colourable Imitation. 195 
 
 misled the Court, but the Court of Appeal held tlhat no fraud was 
 proved. (6 Ch. D. 297 ; 10 Oh. D. 327.) 
 
 (t) Dudgeon v. Thomson. H. L. [1877] 
 
 Lord Cairns, L.C. : " The words ' colourable imitation ' are 
 words which appear to me not very happily chosen, and calcu- 
 lated to create some confusion. I am quite aware that they 
 are words which are used sometimes in the argument of patent 
 cases, but I doiibt very much whether the particular expression 
 is one which has any great authority for its use. There is a 
 well-known manner in which the word 'colourable' or 'colour- 
 ably' is used in patent cases. I have referred to the ordinary 
 form in which injunctions are granted in patent cases by the 
 Court of Chancery, and I take from Mr. Seton's book an 
 example which appears to me to be exactly in accordance with 
 what I recollect to be the practice of the Court in granting 
 injunctions. Jt is in a case which, I think, came before my 
 noble and learned friend as Vice-Chancellor, the case of Be la 
 Bue V. Dickenson. The injunction restrains the defendants, 
 their agents and servants, during the continuance of the patent, 
 from ' using or employing any machines similar to the machine 
 in the plaintiff's bill stated, or any machinery, mechanism, or 
 mechanical contrivance made or arranged according to the 
 plaintiff's said patent inventions, or differing therefrom only 
 colourably, or by the substitution of mere mechanical equivalents 
 for the same.' Now, my lords, what I understand by that, is 
 this, if there is a patented invention, and if you, the defendant, are 
 found to have taken that invention, it will not save you from the 
 punishment or from the restraint of the Court that you have at 
 the same time that you have taken the invention dressed it up 
 colourably, added something to it, taken, it may be, something 
 away from it, so that the whole of it may be said, as is said in 
 this injunction, here is a machine which is either the plaintiff's 
 machine or differs from it only colourably. But underlying all 
 that, there must be a taking of the invention of the plaintiff. . . . 
 
 " My lords, when I look at that which the respondents have 
 in this case done and the article which they have sold, it appears 
 to me to be a different article from the article specified. It 
 is, no doubt, a cognate invention ; it aims at accomplishing the 
 same purpose; it uses, no doubt, friction rollers, but it has not 
 that thing which the patentee in this case has chosen (I have no 
 doubt for proper reasons) to describe as one of the characteristic 
 features of his invention, and which, as it seems to me, he might 
 almost have said was the characteristic feature of his invention ; 
 because, as it seems to me, it was that without which his inven- 
 tion would have been absolutely nil." (L. JR., 3 App. Gas. 45.) 
 
 Lord Blackburn : " The phrase ' colourably ' is very apt to 
 mislead in these cases. If part of the property in the invention 
 be really taken there is an infringement, however much that 
 may be disguised or sought to be hidden. If that is detected by 
 the patentee, and if what is taken is really part of his property 
 
 2 
 
196 INFKINGEMENT : 
 
 given to him by the letters patent, he has a right to proceed 
 against the infringer, however ingeniously the colours may have 
 been contrived to try to conceal the fact that there has been a 
 taldng of part of the property. (lb. 53.) 
 
 (m) Barrett v. Vernon. V.-C. B. [1877] 
 
 The plaintiffs obtained letters patent for " an improved stopper 
 for bottles containing aerated or gaseous liquids." The invention 
 consisted in stoppering bottles containing aerated water, by means 
 of a cylinder or plug of hard wood, having a greater specific 
 gravity than water, such as lignum vitae, or other suitable material. 
 Subsequently, the defendant obtained letters patent for " an 
 improved means for effecting the closing or stopping of aerated 
 liquid bottles," having internal stoppers of less specific gravity 
 than the liquid contained in the bottle, the stopping being effected 
 by means of a " weight or closed device arranged to be temporarily 
 applied to the stopper," so that the weight of the stopper and 
 closing device combined exceeded the specific gravity of the liquid 
 contained in the bottle : — Held, that the defendant's invention 
 was a colourable imitation and an infringement of the plaintiffs' 
 patent, and that the plaintiffs were entitled to an injunction. 
 (45 L. T. Bep., N. S., 755.) 
 
 (v) Bailey v. Eoberton. H. L. [1878] 
 
 Patent for "improvements in preserving animal substances.'' 
 The provisional specification stated the object of the invention 
 to be the preserving of animal substances in a fresh state ; and 
 the patentees described their invention to consist in the use of 
 a solution, composed of a certain specified quantity of gelatine 
 mixed with a given quantity of bisulphite of lime, and applied 
 for the above purpose in the manner pointed out : — Seld, that 
 if the complete specification claimed the same invention as that 
 described in the provisional specification, it was not infringed 
 by the use of a solution of bisulphite of lime, pure and simple, and 
 without admixture of gelatine, in substantially the same manner, for 
 the purpose of preserving fresh meat. (L. B., 3 App. Gas. 1055.) 
 
 («)i) Pennycook Patent Glazing Company v. Mackenzie, Harley 
 
 AND Company. [1882] 
 
 A patent for astragals for holding glass which were formed out 
 of strips of sheet zinc folded into a particular shape : — Held, not 
 to be infringed by astragals rolled from solid iron, the use of metal 
 instead of putty not having been separately claimed. (19 Scott. 
 Law Bep. 353.) 
 
 (w) CoucHMAN V. Greener. H. L. [1884] 
 
 The plaintiff was assignee of a patent for improvements in 
 breech -loading guns, one of the improvements claimed being the 
 converting the fore-end of the gun into a lever by prolonging it 
 backwards into the body of the gun, so as to cock a hammer on the 
 barrels being raised. The defendant being a licensee of the said 
 patent manufactured guns in which the fore-end acted so as to cock 
 
By Colourable Imitation. 197 
 
 the gun on being raised, but not by being prolonged backwards ,so 
 as to form a lever : — Held, that this would be no infringement, and 
 that therefore royalties were not payable. (1 O. B. 197 ; Oriff. 58.) 
 (a;) Needham v. Johnson. C. A. [1884] 
 
 The plaintiff's patent being for a combination, if the defendants 
 have used that combination, and also something added to it, that 
 combination remaining a necessary part of their machine, but the 
 addition to it being an improvement, and if they have used that, 
 without acknowledgment that they are only using an improve- 
 ment, that would be an infringement. If they had invented such 
 a machine, they would have been entitled to take out a patent, 
 not for a new machine, but for an improvement upon the plaintiff's 
 machine, and then they could not use their improved machine 
 without paying the proper price to the plaintiffs for having used 
 their machine, although improved. If they used it without 
 paying, they would infringe. The claim being for machinery by 
 which liquid, while, being filtered, was caused to pass in a par- 
 ticular way, it was found that the defendant caused the liquid to 
 pass in a similar way, but produced this result by machinery 
 which was substantially different : — Held, no infringement. (Griff. 
 168; 1 0. B. 49.) 
 
 (jf) Hayward v. The Pavement Light Company. [1884] 
 
 A patent for improvements in pavement lights by making them 
 of prisms placed so that one side was horizontal, one side was 
 vertical, or nearly so, and the other side was inclined at any angle 
 so as to deflect the light more or less horizontally : — Held, to be 
 infringed by a pavement light, in which the prisms used were in all 
 respects similar, except that the third side was curved. (1 0. B. 
 207; Griff. 124.) 
 
 (z) MooEE V. Bennett. [1884] 
 
 In an action for infringement of a jiatent for improvements in 
 machines for cutting and trimming the hairs or bri^tles of brushes, 
 the plaintiff alleged that the real invention was the new principle 
 of cutting by nitans of the inclined cutting edges as described, 
 but it appeared that if there were any inclination of the edges in 
 the defendant's machine, it was not in any degree the same as 
 that described in the plaintiff's specification, nor would it produce 
 the same eft'ect. Blackburn, L. : " If the defendant had taken the 
 plaintiff's edges, nut parallel, but tapered, ... it would have been: 
 taking a substantial and real part of the combination, and for the 
 object for which the combination was to be usi-ful, viz. the 
 making of brushes in that way ; and it would not have been lesS' 
 an infringement because the defendant added superfluous thirjgs, if 
 he did add them, or because he substituted equivalents, or even 
 left out parts of the combination altogether, provided always that 
 he had taken a substantial part of it for the purposes shown in 
 the specification. And I am strongly inclined to think . . . that' 
 if the plaintiff had proved that, he would have proved that there 
 was an infringement." (Griff. 158; 1 0. B. 129, at p. 150.) 
 
198 INFEINGEMENT : 
 
 (a) NOEDENFELT V. GARDNER. C. A. [1884] 
 
 A macliine which is alleged to be an infringement of a patented 
 combination may have the combination without any variance, 
 or may have it with some alteration, either by subtraction, 
 or by addition, or by substitution of parts. If the alteration be 
 merely colourable, notwithstanding such colourable alteration 
 there may be an infringement. If an alteration by addition 
 be made, and such alteration is an improvement, then no good 
 patent can be made with regard to the new machine except by 
 claiming the invention as an improvement, and showing distinctly 
 what the addition is. An alteration by subtraction, if more than 
 colourable, would alter the combination. It would not be a com- 
 bination of the same things, and if the combinaticm were altered 
 by a material subtraction, it would be a new combination. But 
 an alteration by substitution — that is, by substitution of one of 
 the material elements of the original combination — must be a new 
 combination. The second combination, then, is a combination of 
 different things. There is the taking away of a material element, 
 and a putting in (jf a new material element which is different 
 from any of the elements of the former combination. (Griff. 175; 
 1 0. B. 10, 61.) 
 
 (6) Mackie v. Bebry. [1885] 
 
 In an action for infringement of a patent for improvements in 
 the manufacture of knitted fabrics and in machinery therefor, it 
 appeared that the coraplainer's machinery was so contrived as to 
 vary the length of the courses by varying the number of needles 
 without removing the stitches from the unemployed needles, and 
 knitted the courses so as to be radial, or nearly so, instead of 
 circular. Eadial knitting had been produced before by machines 
 requiring more or less manipulation, but not by an automatic 
 machine. The needles used were latch needles, which worked 
 vertically, being lifted by a horizontal bar, and the courses were 
 •altered by altering the effective length of this bar. The alteration 
 was determined automatically by a pattern mechanism. The 
 basis of the respondent's machine was the stocking frame, and in 
 order to produce radial work he used barbed needles, horizontal 
 in position, and stationary. The thread was laid across the tops 
 of the needles by a yarn carrier pressed into the barb by a device 
 for that purpose, and the barb was closed by a movable presser. 
 The yarn guide was arrested opposite any particular needle by an 
 adjustable stop, and the pattern was determined by a rack bar 
 operated by an escapement, which had to be moved back by hand 
 after each section was completed : — Held, that this machinery was 
 substantially different from the complainer's, and that there was 
 no infringement. (2 0. It. 146.) 
 
 (c) Laurie v. Baker. [1885] 
 
 In an action for infringement of a patent for improvements in 
 bird cages, and for an injunction to restrain the defendant from 
 
By Colour ahle Imitation. 199 
 
 fraudulently passing off defendant's goods as the plaintiff's, it 
 appeared that the defendant had designed a feeding cup which 
 was similar to the plaintiff's in one particular only — viz., the 
 frame— had registered his design, and had then sold the cup as a 
 patent cup : — Held, that as the plaintiff's patent was for a com- 
 bination, there was no infringement; but that the trade under- 
 stood " patent cup " to mean the plaintiff's cup, and that as the 
 defendant knew this, he must be tat en to have fraudulently repre- 
 sented his goods to be the plaintiff's, and damages and an injunc- 
 tion were awarded. (2 0. B. 213.) 
 
 (d) Easterbeook v. Great Western Eailway Company. [1886] 
 Although there cannot be a patent for an idea or a principle 
 
 apart from its physical embodiment in adequate apparatus, yet if 
 the specification discloses an idea, shows a method by whicli it can 
 be carried out, and does not limit the claim of the patentee, any 
 apparatus which by different mechanical means carries out the 
 same idea, is an infringement, though the method used and even 
 the purpose to which the principle or idea is applied is different 
 from those embodied in the specification. (Griff. 81 ; 2 0. iJ. 201 ; 
 3 0. B. 94.) 
 
 (e) Proctor v. Bennis. C. A. [1886] 
 
 A patent for a combination of known mechanical contrivances 
 producing a new result held to be infringed by a machine pro- 
 ducing the same result by a combination of mechanical equivalents 
 of the above contrivances, with some alterations and omissions 
 which did not prevent the new machine from being one which 
 took the substance and essence of the patented invention. (36 
 Ch. B., 740.) 
 
 (f) United Telephone Company v. St. George. [1886] 
 
 A disc of carbonized leather, on which a carbonized wood ball 
 rested lightly by gravity, being suspended from a flexible con- 
 ductor: — Hdd, to be an infringement of the Edison patent, as it 
 formed a closed circuit and did not act by make and break when 
 affected by waves of sound. {Griff. 230 ; 3 0. ii. 33 & 321.) 
 
 (gf) MtrSGEAVE AND SoNS V. HiCKS, HARGEEAVES AND Co. [1886.] 
 
 In an action for infringement of two patents for improved 
 gear for starting engines, it appeared that both the plaintiffs' and 
 defendants' machines were developments of an apparatus known 
 as Galloway's : — Held, by Mathew, J., that, whether the plaintiffs' 
 invention was to be regarded as claiming a combination of old 
 mechanical means for a new and useful purpose, or of old means, 
 and an essential part which was new, the defendants had not 
 imitated the whole or the essential new part, and had, therefore, 
 not infringed. (3 0. B. 49.) 
 
 Qi) Hocking and Co. v. Hocking. [1887] 
 
 The assignees of a patent for a novel apparatus, capable of being 
 
200 INFKINGEMENT : 
 
 lised as a condenser, brouglit an actii n against the patentee for 
 infringement. The defendant denied infringement, and alleged, 
 that if the patent was so construed as to cover the alleged infringe- 
 ment, it would be void for want of novelty. The Court of Appeal, 
 regarding with extreme jealousy the defendant's claim as being in 
 derogation of his own grant, Meld, that although there were some 
 minor difiereuces, the defendant's apparatus was an infringement. 
 (4 0. -B. 256, 434) But held by the House of Loi ds that there was 
 no infringement. (6 0. B. 69.) 
 
 (i) Wenham Company v. May. [1887] 
 
 In an action for infringement of a patent for improvements in 
 gas lamps, the only material difference between the plaintiffs' and 
 defendant's lamps was, that in the latter there was one gauze 
 covering in place of two, in two distinct positions, to moderate 
 and equalise the currents of air : — Held, that as the equalising of 
 the current, rather than the exact position, appeared to be the 
 material point, there was an infringement. (4 0. B. 303.) 
 
 (j) Fletchee v. Glasgow Gas Commissioners. (Scotch.) • [1887] 
 
 In an action for infringement of a patent for improvements 
 in cooking stoves, it was Held, that the patent could only be 
 supported by construing it as claiming the mechanism therein 
 described, and that, although the respondents used part of such 
 mechanism, or something similar thereto, they used it for a 
 different purpose, and did not infringe. (4 0. B. 386.) 
 
 (h) Bhelich v. Ihlee. 0. A. [1888] 
 
 In an action for infringement of a patent for mechanical musical 
 instruments, Held, that the defendants had infringed, in that they 
 had taken the tame parts to perform the same functions, with the 
 colourable variation of a rotating wind chest and fixed music sheet, 
 instead of the plaintiff's fixed wind chest and rotating music sheet. 
 (5 0. B. 198.) Where a defendant has substantially infringed a 
 patent, it is no defence to say he has made improvements. (5 0. B. 
 437.) 
 
 (P) Kaye v. Chubb. H. L. [1888] 
 
 In an action for infringement of a patent for improved means of 
 fastening and unfastening doors. Held, that the defendants had 
 infringed, as they had appropriated every part of plaintiff^s com- 
 bination, with a mere colourable variation, which consisted in 
 making one part act directly instead of indirectly. (5 0. B. 641.) 
 
 (1) GosNELL V. Bishop. C. A. [1888] 
 
 In an action for infringement of a patent for improved trouser 
 stretchers, it was Held, that the defendant's stretchers, although 
 obtaining the same result, obtained it by diffeiont means, and were 
 not an infringement. (5 O. B. 41, 161 ; i T. L. B. 397.) 
 
 (to) Automatic Weighing Machine Company v. Knight. C. A. 
 [1889] 
 The essential part of the plaintiffs' patent was the introduction 
 
By Colowrahle Imitation. 201 
 
 of a break with spindle, so that though the process of weighing 
 Was complete, the index on the dial was not moved until the stop 
 was removed by inserting a penny. The defendant's mechanism 
 was different, in that it had a stop which prevented the machine 
 itself being set in operation until a coin was put in : — Held, that 
 this was equivalent to putting a lock on the machine, and was not 
 a colourable imitation of the plaintiffs' mechanism, and therefore 
 that there was no infringement. (5 T. L. B. 359 ; 6 0. B. 297.) 
 
 (n) Automatic Weighing Machine Company v. Combined Weighing 
 ASD Advertising Machine Company. C. A. [1889] 
 
 This was an action for infringement of the same patent which 
 the Court of Appeal had under consideration in the Automatic 
 Weighing Machine Company v. Knight. The machine, which was 
 alleged to be an infringement, remained out of gear until the coin 
 was dropped in, so that the coin operated on the machine, instead 
 of operating only on the indicator : — Seld, by the Court of Appeal, 
 that they could not reconsider the construction already put on the 
 plaintiffs' specification in Knight's case, and that if that construction 
 were correct there was no infringement. (6 0. B. 367.) 
 
 (o) Automatic Weighing Machine Company v. International 
 Hygienic Society. [1889] 
 
 This was an action for infringement of a patent for an automatic 
 weighing machine, which had already been held by the Court of 
 Appeal to be limited to a claim of every combination of mechanism 
 substantially the same as that described, and to be valid. In the 
 defendants' machine there was a revolving dial connected with 
 the platform on which the person stood to be weighed, and the 
 proper figure on the dial was disclosed by the opening of two 
 shutters actuated by the insertion of a coin. In the plaintiffs' 
 machine there was an index connected with the platform, which 
 revolved opposite a concealed fixed dial ; on the insertion of the 
 coin, an index on an exterior dial became connected with the index 
 of the interior dial, and revealed the weight. There was no 
 difference in the methods used for collecting and releasing the 
 coin, and resetting the machines. The inventor of the defendants' 
 machine was not called to show how he arrived at his invention : 
 —Held, by Charles, J., that the defendants' machine achieved the 
 same ends by means with differences which were merely colourable, 
 and that there was infringement. (6 0. B. 475.) 
 
 (jp) Thomson v. Moore. [1889] 
 
 This was a motion for attachment to commit the defendant for 
 breach of an injunction to which he had consented, restraining 
 him from infringing the plaintiff's patent for improvements in 
 compass cards. The defendant denied that his cards were ah 
 infringement. The plaintiff used a thin rim of paper, surrounded 
 with a thin rim of aluminium, connected to the boss by fine silk 
 radial threads in tension, and short, light needles, arranged in a 
 horizontal plane a little beneath the card, and attached to it by 
 
202 INFRINGEMENT: 
 
 light silk threads, and thereby attained : (1) diminution of friction, 
 resulting in sensitiveness and accuracy ; (2) small magnetic 
 moment ; (3) long vibrational period. The defendant's card 
 differed in having an L-shaped rim of aluminium, transverse bars 
 of aluminium instead of silk spokes, and the needles arranged in 
 two vertical rows, some inches below the card, in order, as the 
 defendant said, to suit his new patented system of correctors : — 
 Held, by the Court of Appeal in Ireland (reversing Porter, M.E.), 
 that : the essence of the plaintiif's invention being so to combine 
 extreme lightness of card with long period of vibration, and small 
 needles as to obtain a combination of results not previously obtained, 
 viz. diminution of frictional error, steadiness, and amenability 
 to correction, such a combination amounted to a new result, and 
 the doctrine of mechanical equivalents applied ; that there was an 
 essence or substance of invention underlying the combination, and 
 that the defendant's card obtained the same results by substan- 
 tially the same means, and diifered only in non-essential particulars 
 from the plaintiif's invention, and was therefore an infringement, 
 and that the attachment must go. (6 0. B. 426.) 
 
 {q) WiNBY V. Manchester Steam Tramways. [1889] 
 
 Tou cannot evade the rights of a patentee (of improvements in 
 points for tramways where the tongue was worked vertically by a 
 spring) by substituting a weight for a spring. (6 0. B. 369.) 
 
 Intention immaterial. 
 
 (r) Heath v. Unwin. Ch. [1847] 
 
 The doctrine laid down in this case by the Court of Exchequer 
 (14 L. J., Ex, 153), that, if a patent has been infringed uninten- 
 tionally, the patentee is not entitled to redress, disapproved of. 
 (15 Sim. 552.) 
 
 Shadwell, V.-C, said : " The party complaining of the act is not 
 the less prejudiced by it because it was committed unintentionally ; 
 and my opinion is that, if a party has done an act that is injurious 
 to the rights of another (though without any intention of doing 
 him an injury), he is answerable for the consequences. In Stevens 
 V. Keating, the Lord Chancellor disapproved of the case in the 
 Court of Exchequer ; and I must decline to act upon the principle 
 which it lays down." (16. 563.) 
 
 (s) Stead v. Anderson. [1847] 
 
 The question of infringement depends not on what the defendant 
 intends, but on what he does — per Wilde, C.J. (2 Web. P. G. 
 156.) 
 
 (<) Heath v. Unwin. H. L. [1855] 
 
 Parke, B., said : " In delivering the judgment of the Court of 
 Exchequer in a former stage of this case, I stated the opinion of 
 the Court to be, that there could be no indii-ect infringement if the 
 defendant did not intend to imitate at all. That part of the 
 
A (Question for the Jury. 203 
 
 judgment lias since been justly objected to in Stevens v. Keating, 
 and no doubt we were in error in that respect. There may be an 
 indirect infringement as well as a direct one, though the intention 
 of the party be perfectly innocent, and even though he may not 
 know of the existence of the patent itself." (25 L. J., 0. P. 19.) 
 
 (u) Walton v. Lavater. [1860] 
 
 Erie, C.J. : " With respect to the defendant not being liable, 
 because the articles were imported from abroad, I should say that, 
 even if it was a simple case of importation, without any proof of 
 hnowledge of the article being patented, or of the infringement, it w^ould 
 be sufficient evidence of infringement that the defendant had 
 imported and sold." (29 L. J., C. P. 279.) 
 
 (v) M'CoKMicK V. Gray. [1861] 
 
 Bramwell, B. : "I am satisfied there is no diiference between 
 making a thing with one intent and making it with another, 
 because I always understood that if a man may do a thing he may 
 do it with whatever intent he pleases." (31 L. J., Ex. 42 ; 7 
 H. (fc N. 25.) 
 
 («;) Newall v. Elliott. [1864] 
 
 Mere intention cannot make any act done an infringement which, 
 without that intention, would not be an infringement. (10 Jur., 
 N. S., 954; 13 W. B., 11; 10 L. T. Bep., N. S., 792.) 
 
 (a) Curtis v. Platt. Ch. [1864] 
 
 Ignorance of the existence of a former invention is no answer to 
 a charge of infringement, where the second invention is capable of 
 being accurately represented as an imitation of the former. (11 
 L. T. Bep., N. S., 245.) 
 
 A Question for the Jury. 
 
 (y) Walton v. Potter. N. P. [1841] 
 
 Tindal, C.J. : " Now, according to the general rule upon this 
 subject (infringement), that is a mere question of fact, and pecu- 
 liarly for the consideration of the jury, and it will be for you to 
 say under the circumstances that have been brought in review 
 before you, whether that which has been done by the defendants 
 amounts to such an infringement or not." (1 Web. P. G. 686.) 
 
 (z) Macnamaka v. Holsb. N. P. [1842] 
 
 Where, in an action for infringing a patent for blocks for pave- 
 ments, the plaintiff claimed as his invention that his block was 
 bevelled both inwards and outwards on the same side of the block, 
 and it was alleged that the defendant's blocks were an imitation 
 of the plaintiff's, as two of the defendant's blocks were equivalent 
 to one of the plaintiff's :—HeM, that it was for the jury to say 
 whether the defendant's blocks were in effect the same as the 
 plaintiff's, although no single block of the defendant's was 
 
204 INFBINGEMENT. 
 
 bevelled both, inwards and outwards on the same side. {Car. & M.'. 
 471.) 
 
 (a) Newton v. Graxd Junction Eailway Company. [1846] 
 
 The question, whether what the defendant has done is merely 
 colourably different from the plaintiff's invention, is for the jury. 
 (5 Exch. 331 ; 20 L. J., Ex. 427 (»).) 
 
 (6) Stevens v. Keating. N. P. [1847] 
 
 Upon the plea of not guilty his lordship said : " The question 
 is, has the defendant done that which is within the claim — no 
 matter whether the claim is good or not." (2 Web. P. G. 191.) 
 
 (c) Sellers v. Dickinson. [1850]- 
 
 The Court will not, in deciding whether there has been an 
 infringement, express an opinion as to whether the jury were 
 justified in their verdict, unless it is contended that the verdict 
 was against evidence, (5 Exch. 323.) 
 
 (d) De la Eue v. Dickinson. [1857] 
 
 In an action for the infringement of a patent, the question of 
 infringement is for the jury and not for the judge, although there 
 be no question vsdth respect to whether the defendant has or has 
 not used the particular machine or process which is alleged to be 
 an infringement. (7 Ell. & Bl. 738.) 
 
 Campbell, C.J., in delivering the judgment of the court, said : 
 " There may well be a case where the judge may and ought to 
 take upon himself to say that the plaintiff has offered no evidence 
 to be left to the jury to prove infringement, as if there were a 
 patent for a chemical composition, and the evidence was that the 
 defendant had constructed and used a machine for combing wool. 
 But, if the evidence has a tendency to show that the defendant 
 has used substantially the same means, to obtain the same result 
 as specified by the plaintiff, and scientific witnesses have sworn 
 that the defendant actually has used such means, the question 
 becomes one of fact, or of fact mixed with law, which the judge is 
 bound to submit to the jury." (Ih. Ibb.) 
 
 (e) Seed v. Higgins. H. L. [1860] 
 
 When a question of novelty, or infringement, depends merely 
 on the construction of the specification, it is one entirely for the 
 judge ; but where it also depends on other circumstances, such 
 as the degree of difference or of similitude between two machines, 
 it is a mixed question of law and fact ; what the jurymen find to 
 have been done is the matter of fact, but the judge must apply 
 that fact according to the rules of law, and is entitled and bound 
 to say whether what has been done amounts to an infringement. 
 (8 H. L. Gas. 650 ; 30 L. J., Q. B. 314 ; 6 Jur., N. S., 1264.) 
 
 (/) CuETis V. Platt. H. L. [1866] 
 
 The question of infringement is a mixed question of law and 
 fact. (35 L. J., Gh. 862.) 
 
ISLE OF MAN. 205 
 
 Injunction. See Practice— Injunction, pp. 330 to 353 
 to restrain Threats. See under Tiireats, p. 545 seq. 
 
 Inspection in Patent Cases. See Practice — Inspection, pp. 324 to 330. 
 
 Intention to infringe is immaterial. See under Infringement, pp. 202, 203 
 may be material in order to show dedication, p. 242 (d). 
 
 International arrangements for protecting inventions. See pp. 61 to 64. 
 Exhibition. See Bxliibition, p. 93. 
 
 Interrogatories. See Practice, pp. 318 to 324. 
 
 In Transitu. 
 
 Infringement by user in transitu in England, pp. 160 (d), 162 Qi), 289 (d). 
 
 Invention. 
 
 Patents Act, 1883, sect. 46. In and for the purposes of this Act, 
 invention means any manner of new manufacture the subject of letters 
 patent and grant of privilege within sect. 6 of the Statute of Monopolies 
 (that is, the Act of the twentv-first year of the reign of King James I., 
 chap. 3, intituled An Act concerning Monopolies and Dispensations with 
 penal laws and the forfeiture thereof), and includes an alleged invention. 
 
 [For sect. 60 of the Statute of Monopolies, see p. 491.] 
 
 [As to what manner of new manufacture may be the subject of letters 
 patent, see under Subject-matter, pp. 491 to 544.] 
 
 .Inventor, 
 
 first and true. See under Patentee, pp. 272 to 278 
 
 importer of foreign invention, pp. 144, 278 and 279 
 
 merit of, ground for extension, pp. 113 to 116 
 
 remuneration of, consideration ol, by judicial committee, pp. 120 to 127. 
 
 Ireland. 
 
 Patents Act, 1883, sect. 110. All parties shall, notwithstanding anything 
 in this Act, have in Ireland their remedies under or in respect of a patent as 
 if the same had been granted to extend' to Ireland only. 
 
 Isle of Man. 
 
 Patents Act, 1883, sect. 16. Every patent when sealed sbaU have effect 
 throughout the United Kingdom and the Isle of Man. 
 
 Sect. 112. This Act shall extend to the Isle of Man, and — 
 
 (1.) Nothing in this Act shall affect the jurisdiction of the Courts in the 
 Isle of Man, in proceedings for infringement or in any action or proceeding 
 respecting a patent, design, or trade mark competent to those courts ; 
 
 (2.) The punishment for a misdemeanour un.ler this Act in the Isle of 
 MH,n shall be imprisonment for any term not exceeding two years, with or 
 without hard labour, and with or without a fine not exceeding one hundred 
 pounds, at the discretion of the court; 
 
 (3.) Any offence under this Act committed in the Isle of Man which would 
 in England be punishable on summary conviction may be prosecuted, and 
 any fine in respect thereof recovered at the instance of any person aggrieved, 
 in the manner in which offences punishable on summary conviction may for 
 the time being be prosecuted. 
 
206 . ISSUES. 
 
 Issues. See Practice— Pleading, pp. 290 to 293. 
 
 Joint Inventors. 
 
 Patents Act, 1883, sect. 4 (1). Any person, whether a British subject or 
 not, may make an application for a patent. 
 
 (2.) Two or more persons may make a joint application for a patent, and a 
 patent may be granted to them jointly. 
 
 Sect. 5, sub-s. 2. An application must contain a declaration to the effect 
 that the applicant is in possession of an invention, whereof he, or in the case 
 of a joint application, one or more of the applicants, claims or claim to be the 
 true and first inventor or inventors, and for which he or they desires or desire 
 to obtain a patent ; and must be accompanied by either a provisional or 
 complete specification. 
 
 Patents Act, 1885, sect. 5. Whereas doubts have arisen whether under 
 the principal Act a patent may lawfully be granted to several persons jointly, 
 some or one of whom only are or is the true and first inventors or inventor; 
 be it therefore enacted and declared that it has been and is lawful under the 
 Principal Act to grant such a patent. 
 
 [As to the declaration which is required, see Patents Act, 1885, sect. 2, 
 under Declaration, p. 81.] 
 
 Joint Owners, 
 
 liability of, p. 206 (7i) 
 
 what agreement creates a partnership, pp. 207 (i), {h\ 208 (m) 
 
 what interest creates a partnership, p. 206 (g) 
 
 interests of, under agreement relating to prospective patents for particular 
 
 objects, p. 207 {j) 
 where tenants in common, p. 207 (Z) 
 
 joint tenants, p. 207 (I) 
 right of co-patentees severally to use a joint patent for their own ex- 
 clusive benefit, p. 208 (m) 
 number of, in licence, immaterial, p. 211 (<) 
 ownership of moiety creates interest ^ro tanto, p. 69 (5) 
 caimot severally release joint rights of action, p. 400 {y) 
 estopped from disputing validity of patent as against each other, p. 91 (g) 
 
 but not by acts of former joint owners, p. 91 (s) 
 
 nor after termination of partnership, p. 338 (s) 
 one of, may maintain suit if bill not demurred to, p. 288 (<) 
 account of sales or profits between, pp. 369 (to'), 370 (0), (j). 
 
 (gr) EiDGWAY V. Philip. [1834] 
 
 A., tlie patentee of an engine, and B., were partners under the 
 firm of A. & Co. C. puroiiased tlie licence of erecting such, engines 
 in Cornvrall. D. contracted with A. & Co. to erect an engine in 
 Cambridgeshire. A. informed D. that B. and C. were his partners, 
 and C, on being applied to, said it was correct. During the 
 making of the engine, 0. frequently came to inquire how the 
 work went on. J), sued B. ind C. for a breach of the contract, 
 when 0. proved his limited interest in the patent. The jury 
 having found that C. was not a partner, the Court refused a new 
 trial. (1 G. M. & B. 415 ; 6 Tyr. 131.) 
 
 Qi) LoTELL V. Hicks. Exch. Ch. [1837] 
 
 Joint owners of a patent, for a particular process used in carrying 
 on a trade, are answerable in solido for tho losses occasioned in 
 
JOINT OWNEES. 207 
 
 relation to the patent by the "frauds of their co-adventurers. (2 
 Y. & a 481.) 
 
 (*) Elgib v. Webster. [1839] 
 
 By an agreement in writing, W. agreed with E. to advance him 
 a sum of money for the purpose of manufacturing and perfecting 
 certain inventions ; and it was agreed that if the inventions should 
 become of public or private use, W. should be entitled to one-third 
 of the profits of the invention. The agreement contained an 
 express promise on the part of E. to repay the sum of money 
 advanced by W. : — Held, in an action brought by W. to recover 
 the money thus advanced, that this agreement did not constitute 
 a partnership between the parties with respect to that sum. (6 
 M. & W. 518.) 
 
 (y) Bewley v. Hancock. Ch. [1856] 
 
 An agreement was entered into between four persons who were 
 interested in patents and inventions relating to gutta percha, 
 that all patents taken out, or in the course of being taken, or 
 intended to be taken out, or that might at any time thereafter be 
 taken out by any or either of them, or on account of and for the 
 benefit of any or either of them in relation to the preparation and 
 application of gutta percha, or the manufacture of any article 
 therefrom, should be assigned to trustees, and held for their 
 common benefit. Subsequently one of the parties took out a 
 patent for " improvements in apparatus and machinery for giving 
 shape and configuration to plastic substances," and refused to 
 assign the patent to the trustees, alleging that it was not com- 
 prised in the agreement : — Meld, that the patent, so far as it 
 related to gutta percha, was subject to the trusts of the agi-eement,, 
 and that it could not be treated as not being so, because it was for 
 machinery which might be applied to the manufacture of articles 
 of gutta percha, and was not for the manufacture of any such 
 articles. (6 Be G., M. & G., 391 ; 2 Jur., N. S., 289.) 
 
 (F) Osborne v. Jullion. [1856] 
 
 O. agreed in writing with J. to work certain patents, the pro- 
 perty of J., upon an experiment, and on a specified result being 
 attained to the satisfaction of 0. to be expressed in writing, the 
 patents were to be assigned to 0., and to be worked by J. at a 
 salary. The experiment was successful, but O. neither expressed 
 his satisfaction in writing, nor called for an assignment ; and after 
 the lapse of several years filed a bill for a dissolution of the agree- 
 ment, on the ground of a quasi partnership : — Seld, that there was 
 no partnership, and that therefore the remedy was at law. (4 
 W. B. 767 ; 26 L. J., Ch. 6.) 
 
 (I) Hancock v. Bbwlby. Ch. [1860] 
 
 Where a patent is vested in trustees upon trust for several 
 tenants in common or joint tenants, quaere, whether any one of 
 them is at liberty to work the patent on his own account. (John. 601.) 
 
208 JOINT OWNEES. 
 
 •(m) Mathers v. Geeen. Ch. [1864-5] 
 
 A., B. and C. were co-patentees of an improvement upon a prior 
 invention of which C. was the sole patentee. B. & C. Laving 
 worked the joint patent : — Seld, that, inasmuch as A. conld not 
 use the improvement profitably without the consent of C. as owner 
 of the prior patent, A. was entitled to a third of the profits made 
 by B. and C. from the use of the joint patent as an improvement 
 on the prior patent. (34 L. J., Ch. 298.) 
 
 The above decision of the Master of the EoUs was reversed by 
 the Lord Chancellor (Oranworth) on the ground that there is no 
 principle of law, in the absence of contract, which can prevent 
 any person not prohibited by statute from using any invention 
 whatever ; and no implied contract, where several persons jointly 
 obtain letters patent, that no one of them shall use the invention 
 without the consent of the others, or if he does, that he shall use 
 it for their joint benefit. Semhle, where letters patent have been 
 granted to more than one person, the Court will not admit parol 
 evidence to show that the patent is the property of one or more to 
 the exclusion of any of the others. (35 L. J., Gh. 1 ; 11 Jur., N. S., 
 845 ; 14 W. B. 17 ; 13 L. T. Bep., N. S., 420.) 
 
 (w) ^a; ^aj-fe Maomillan, I« re Whittaker. Ch. [1871] 
 
 W., being in difficulties, mortgaged to M. certain patents, to 
 secure advances previously made for the purpose of developing the 
 patents, and paid him, out of the proceeds of the patent, 61. a 
 week : — Held, that this payment did not constitute a partnership 
 between W. and M. (24 L. T. Bep., N. S., 143.) 
 
 (o) Kenny's Patent Button-holeing Company v. Somerville and 
 LuTWYCHE. V.-C. B. [1878] 
 
 Where a partnership at will is formed, for the purpose of 
 working an invention for which a patent has previously been 
 taken out by and registered in the name of one of the partners 
 alone, the patent becomes an asset of the partnership, and each 
 partner acquires a right to practise the invention ; and this right 
 is not taken away by the registered owner assigning the patent to 
 third parties, who have notice of the existence of the partnership. 
 K. had, with the assistance of L., obtained a patent in his own 
 name. After working the patent in partnership with L. for four 
 years, K. agreed with the trustees of a projected company to 
 assign the patent to it. At the time of the agreement the trustees, 
 and at the time of the assignment the directors, knew that L. and 
 K. had been working the invention together. L. was warned not 
 to infringe the patent, but he continued to work the invention, 
 and the company then sought to restrain him from so doing : — 
 Held, that by the partnership, L. had obtained a licence to work 
 the invention ; that, at the time of the assignment of the patent, 
 the company had notice of the existence of his right; and that 
 they could not revoke the licence. (37 L. T. Bep., N. S., 878.) 
 
LAW OFFICEE. 209 
 
 (p) Kins v. Oliver and Co. [1884] 
 
 In an action for infringement of a patent for apparatus for 
 preventing unwinding at collieries, and for a declaration that an 
 agreement between the plaintiff and one H., was void, it appeared 
 that the plaintiff, the patentee, agreed with H., in 1879, that H., 
 who afterwards assigned to the defendants, should have the sole 
 right of manufacturing the patented article, and should pay one- 
 half the fees for keeping up the patent, and should thereupon 
 become part owner of the patent, and should use his best endea- 
 vours to obtain orders for, and manufacture the patented article. 
 The plaintiff and H. were to be entitled to any extension or modi- 
 fication of the patent, or the principle thereof. The plaintiff took 
 out further letters patent in 1882. The jury found that H. had 
 failed to pay some of his share of the fees, and had failed to use 
 his best endeavours, and that the patent of 1882 was a new 
 invention, simply added to the old patent, and not an extension 
 or modification. On these findings, it was declared that the 
 agreement was void, and a motion for a new trial was refused. 
 (1 0. B. 23, 42.) 
 
 (q) Wilson v. Baebour. Ireland. C. A. [1888] 
 
 A. and B. being jointly interested in a patent, it was agreed 
 that B.'s firm should make and sell, and use their best endeavours 
 to develop the sale ; A. to receive part of the profits, and all future 
 improvements of the patent, whether invented by A. or B., to 
 belong- to the patent. B. and Co. found the machine defective ; 
 made experiments to improve it ; and ultimately adopted a machine 
 with a different principle, and sold them, without sharing the 
 profits : — Held, that B. and Co. had not used their best endeavours 
 to develop the sale, and that the plaintiff was entitled to royalties 
 during the continuance of the agreement, but not to damages 
 besides. (5 O. B. 675.) 
 
 Journal. See Illustrated Journal, p. 151 
 
 Judicial Committee. 
 
 iurisdiction of, pp. 98, 105 
 rules of, pp. 98, 99. 
 
 Jury. 
 
 novelty of invention is a question for, p. 267 
 
 utility of invention is a question for, p. 580 
 
 sufficiency of specification a question for, pp. 429 (o), 430 («;) 
 
 on trial of issues, pp. 356, 357 
 
 special, costs of, pp. 384 (s), 356 (c), 385 (w) 
 
 explain terms in specification, p. 461 (J), (p) 
 
 action for infringement to be tried without, p. 65. 
 
 Laches. See Practice, Injunction, Delay, pp. 346 to 349. 
 
 Law Officer. 
 
 definition of, p. 210 
 
 decisions of no authority in action for infringement, p. 156 (r) 
 
210 LETTEES PATENT. 
 
 to h(ar appeals from comptroller as to amendment, p. 10 
 
 as to refusal to accept aiiplication, p. 35 
 
 as to op|iosed graut, p. 38 
 rules of practice made by, p. 380 
 proceedinsis before, Patents Act, 1883, sect. 38, p. 379 
 costs JDcfore, sect. 38, p. 379 
 may exaniine witnesses, sect. 38, p. 379 
 
 may give directions as to sealing patent in some cases, sect. 12, p. 32 
 may obtain assistance of expert, sect. 11, p. 38. 
 
 Patbkts Act, 1883, sect. 117 (1). In and for the purposes of tliis Act 
 unless the context otherwise requires : Law Officer means Her M.ijesty's 
 Attorney-General or Solicitor-General for England. 
 
 Letters Patent. 
 
 application for. See nnder Application, p. 33 
 amendment of. See under Amendment, p. 9 
 form of. See under Patent, p. 270. 
 
 Libel by stating that article has been " proved to be an infringement," 
 p. 210 (r). 
 
 (r) Cramptost v. Swete. 
 
 The plaintiff brought an action for libel, alleging that the 
 defendants sent to their customers a circular, stating that they 
 were unable to supply a particular kind of electric bell, invented 
 by the plaintiff, because it had been " proved to be an infringe- 
 ment " of another patented bell. No action had then been brought 
 against the plaintiff for infringement, and, although one was after- 
 wards commenced, it was abandoned: — BeZd, that the plaintiff 
 was entitled to damages. (58 L. T. 516.) 
 
 Licence. 
 
 compulsory, pp. 77, 78 
 
 notification of, to be entered on Register, p. 397 
 
 copies of documents affecting proprietorship in to be supplied to Comp- 
 troller, Patents Act, 1883, sect. 23 (3), p. 397. 
 derogation from, by grantor, p. 216 (/c) 
 need not be by deed, pp. 212 (u), (w), 214 (c) 
 may be verbal, p. 214 (c) 
 requires no stamp, p. 212 {w) 
 not assignable, p. 213 (z) 
 in prospective patents, p. 215 {g) 
 
 to manufacturer implies licence to his vendees to vend, p. 214 (d) 
 covenant in, to use patented invention only not; in restraint of trade, 
 
 p. 213 (a) 
 covenant to account, auxiliary to covenant to pay royalties, p. 213 (z) 
 forfeiture of, by non-payment of royalties, pp. 212 (a;), 213 {y) 
 
 waiver of, p. 213 {y) 
 void where grantor knows patent is invalid, p. 211 (m) 
 exclusive, immaterial in how many persons vested, p. 211 (<) 
 
 or what is the extent of, p. 211 (i) 
 to purchaser in one country, to use in another, where invention pro- 
 tected in both, is implied, p. 216 (i) 
 but rights of an assignee must not be defeated, p. 216 (») 
 agreement to restrain infringement of, p. 214 (/) 
 
 notice of infringement can be claimed by grantor, p. 214 (/) 
 construction of, p. 214 (e) 
 
LICENCE. 211 
 
 to use carries no implied warratity of validity of patent, pp. 90 (j),(l), 91 (p) 
 
 latent ambiguity in, p. 216 (/) 
 
 limited to a particular firm is not limited as to place, p. 217 (o) 
 
 is not equivalent to an assijinment, p. 218 (r) 
 
 to manufacture abroad does not imply permission to sell in Ensland. 
 
 p. 216(0 
 notice to terminate need not be under seal, p. 217 (n). 
 
 Licensee, 
 
 right to sue, pp. 286 (./), Q), (n), 288 (w) 
 
 cannot recover money paid for use of a patent subsequently found to bo 
 
 void, p. 211 (s) 
 imless fraud be proved, p. 67 (i) 
 
 estoppel in actions by patentee against, when licence is exclusive, p. 211 (u) 
 
 when licence is not exclusive, pp. 87 (b), 89 (h), 90 (i), (j), (I), 91 (o) 
 
 where use of and payment under licence have ceased, pp. 88 (d), 91 (r) 
 
 in suit against, where patent held invalid in proceedings between 
 
 patentee and third party, p. 90 (m) 
 
 cannot manufacture articles which are within the specification although 
 
 known before the date of patent, p. 218 (p) 
 must pay royalties although part of invention has been disclaimed, 
 p. 218 (q). 
 
 (s) Tayloe v. Hare. [1805] 
 
 A., having obtained a patent for an invention of wliicli lie 
 supposed himself the inventor, agreed to let B. use it upon pay- 
 ment of a certain annual sum secured by bond ; this sum vras paid 
 for several years, when B., discovering that A. was not the 
 inventor, but that it was in public use before A. obtained his 
 patent, brought an action for money had and received, to recover 
 back the amount of the annuity paid : — Held, that he could not 
 recover. (1 B. & P. (N. B.) 260.) 
 
 (t) Peothekoe v. May. [1839] 
 
 The grant of an exclusive licence to use a patent does not 
 invalidate the patent itself, although the patent may be vested in 
 twelve persons ; and it is wholly immaterial to its validity, in what 
 number of persons such a licence is vested, whether exclusive or 
 not. Such a licence would not be invalid if the districts or district 
 covered by the licence included the whole extent of the patent. 
 (5 M. & W. 675; 1 Weh. P. C. 414:.) 
 
 (u) Ohantee v. Lbese. Ex. Ch. [1839] 
 
 By an agreement, not under seal, between the plaintiff and A., 
 B. and C. of the one part, and the defendant of the other part, 
 reciting that the plaintiff had obtained a patent for an improve- 
 ment in furnaces, and was solely interested in another patent 
 invention; that the plaintiff and A. had obtained a patent for 
 another invention ; the plaintiff and B. for another ; and the 
 plaintiff and 0. for another ; it was agreed between the parties, 
 that, for the considerations therein mentioned, it should be lawful 
 for the defendant, exclusively to use, manufacture and sell any or 
 all of the said patent inventions, within certain limits, during the 
 continuance of the several patents, on certain terms specified in 
 the agreement. In an action on this agreement by the plaintiff 
 
 p 2 
 
212 LICENCE. 
 
 alone, to enforce one of such terms, the defendant set out the 
 plaintiff's patent for the improvements in furnaces, and pleaded 
 that it -was not, at the time of the grant, a new invention, whereby 
 the grant was void, which the plaintiff, at the time of making the 
 agreement, well knew: — Held, that the plea was a bar to the 
 action. (4 M. & W. 296; 1 E. & E. 224; affirmed on appeal; 
 5M.&W. 698.) 
 
 (v) Chanter ». Dewhuest. [1844] 
 
 Action for the price of a licence granted by the plaintiffs to the 
 defendants. The licence was in writing, but not under seal. The 
 defendants having received the licence, kept it, and used the 
 invention, but, when called upon to pay the price agreed upon, 
 objected to pay for it, on the ground that it was void, as not being 
 under seal. By the terms of the letters patent, all persons were 
 commanded not to make, use or put in practice the said invention, 
 &c., without the licence, consent or agreement of the patentee, his 
 executors, &c., -' in writing, under his or their hands and seals, first 
 had and obtained," upon pain of a contempt of the royal command, 
 and of being answerable to the plaintiffs in damages : — Eeld, first, 
 that the defendants, having obtained the licence they had bargained 
 for, and kept it, were bound to pay for it ; and secondly, that the 
 licence was not void as not being under seal. (12 M. & W. 823; 
 13 L. J., Exch. 198.) 
 
 (w) Chanter v. Johnson. [1845] 
 
 Parke, B. : " The licence was rejected at the trial, for want of a 
 stamp, and the question, therefore, arises whether any stamp was 
 necessary. The defendants say the instrument is a deed, and 
 ought to be stamped as such ; but that is not so : it does not pur- 
 port to be sealed and delivered as a deed ; it rather resembles an 
 award, or a warrant of a magistrate, which, though under seal, are 
 not deeds." New trial ordered. (14 M. & W. 411.) 
 
 (x) Tielens v. Hooper. [1850] 
 
 By indenture, the plaintiff granted to the defendant, for a term 
 of years, the exclusive licence to use a patent upon payment of 
 certain sums by way of royalty. The indenture contained a 
 covenant for payment of the royalty, and also the following: — 
 '' And it is hereby agreed that if it shall happen in any year during 
 the continuance of the term that royalties or sums of money 
 hereinbefore covenanted to be paid shall not amount to the sum of 
 £2,000 sterling, then, and in every such case, and as often as the 
 same shall so happen, the defendant shall, within fourteen days 
 after the expiration of any year in which it shall so happen, pay 
 to the plaintiff such a sum of money as with the royalty hereby 
 reserved will amount to £2,000 for that year ; or if the defendant 
 shall, at any time, make default in payment of such sum of money 
 aforesaid, within the time appointed for payment, then it shall be 
 lawful for the plaintiff, by writing signed by him, and endorsed 
 on the said indenture or duplicate thereof, to declare that the said 
 
LICENCE. 213 
 
 indenture and the powers and licence thereby granted shall cease 
 and determine :" — Seld, that this was not an absolute covenant on 
 the part of the defendant to pay £2,000 a year during the term, 
 but an alternative covenant, enabling the plaintiff to put an end 
 to the licence on non-payment of that sum by the defendant. 
 (5 Exch. 830.) 
 
 (if) Warwick v. Hooper. [1850] 
 
 The plaintiffs, the assignees of a patent, granted a licence to the 
 defendant to use the patent upon the terms of his paying an 
 annual rent of £2,000, to be made up at the end of each year, and 
 reserved to themselves the power of determining the licence in 
 the event of default being made in payment of this rent. The 
 defendant failed in paying the rent ; but the plaintiffs, notwith- 
 standing, for several years allowed the defendant to use the patent, 
 and received from him a less annual sum than that stipulated. At 
 length, however, they determined the licence, having, subsequently 
 to the expiration of the previous year, received from the defendant 
 payments on the footing of the reduced rent : — Held, that, by so 
 doing, the plaintiffs had elected not to treat the previous breach as 
 a forfeiture of the licence, and that consequently they were not 
 entitled to an injunction restraining the defendant from using the 
 patent. (3 Mao. & G. 60.) 
 
 (z) Bower v. Hodges. [1853] 
 
 A., the patentee of machinery for making iron pipes, granted by 
 deed to B. and his assigns the exclusive licence to manufacture 
 them, B. paying a royalty of so much for every ton manufactured 
 or sold bj'' him or his assigns, and to account. B. subsequently 
 assigned his interest in the licence to the plaintiff, who transferred 
 it to M. and E. in trust for the defendants ; and the defendants 
 covenanted with the plaintiff to perform the covenants made by 
 B. to A. in the first deed. It was Held, that the covenant to 
 account was no qualification of the covenants to pay the royalties, 
 but merely auxiliary to it. 
 
 Maule, J. : " You cannot say there is any particular form for 
 passing a licence, but licensing a person and his assigns is licensing 
 
 him and all whom he may licence A licence is not really 
 
 assignable. The assignment acts only as an estoppel between the 
 parties." (22 L. J., C. P. 198.) 
 
 (a) Jones v. Lees. [1856] 
 
 A covenant, by a licensee for the residue of a term of fourteen 
 years, of patented improvements in machinery for slubbing fibrous 
 substances, not to make or use any slubbing frames whatever 
 without the invention applied to them, is not void as a covenant in 
 restraint of trade. (1 H cfi JV. 189 ; 2 Jur., N. S'., 645 ; 26 L. J., 
 Exch. 9.) 
 
 (5) Schlumberoeb v. Lister. [1860] 
 Declaration for the infringement of a patent. Plea, that admi- 
 
214 LICENCE. 
 
 nistrator of the patentee granted a licence to S. and A. to use the 
 patent, who assigned the same to the defendant. Eeplication on 
 equitable grounds, that the deed of licence was of even date with 
 another deed between the administrator of the patentee, six other 
 persons and S. and A. ; and by the latter deed it whs witnessed 
 that S. and A. should not manufacture or sell machines under the 
 licence out of Great Britain and Ireland, and that by another deed 
 between S. and A. of the one part, and the defendant of the other 
 part, the defendant covenanted that he would perform all the 
 covenants in the first d^ed contained, to be performed on the part 
 of S. and A. The replication then alleged breaches of the covenant 
 by the defendant in making and selling machines out of Great 
 Britain and Ireland. Eeplication held bad on demurrer. (2 
 Ell. & Ell. 870 ; 29 'i. /., Q. B. 157 ; 6 Jur., N. S., 1336; 9 W. B. 
 138 ; -6 L. T. Bep., N. S., 549.) 
 
 (c) Crossley v. Dixon. H. L. [1863] 
 
 D. agreed verbally with C. to be supplied by C. with machines 
 constructed according to patenis of which C. was the owner, and 
 to pay royalties for the use of such machines, and for the use of 
 any machines supplied to him by anybody else which embodied 
 the principle of C.'s patent : — Held, that this verbal agreement 
 must be treated as a licence. (10 S. L. Gas. 293 ; 9 Jur., N. S., 
 607; 32 L. J., Gh. 6i7 ; 11 W. B. 716 ; S L. T. Bep., N. S., 260.) 
 
 (d) Thomas v. Hunt. [1864] 
 
 A licence to A. to manufacture a patent article is an authority 
 to his vendees to vend it without the consent of the patentee. 
 (17 G. B., N. S., 183.) 
 
 (e) GoucHER V. Clayton. Ch. [1865] 
 
 The patentee of an invention for improved beaters fur 
 thrashing machines, granted a licence to the defendants, to 
 make, manufacture and sell machines, as described in the 
 specification, for a term of years, and during the t^ame period 
 to apply the invention to other machines, pa\ing a royaltj' of 1^. 
 for every thrashing machine manufactured by them, and the like 
 sum for every machine made, or to be made, to which the invention 
 should be wholly or in part applied by them ; and the defenilants 
 covenanted to affix roj'alty plates to every new and altered machine 
 which should be manufactured or applied by them : — Held, that 
 the defendants were not intended to pay royalty merely on every 
 thrashing machine, but that the true construction of tlie licence 
 was, that they were to pay on all beaters manufactured by them 
 according to the patent, and applied to machines originally, or by 
 way of renewal. (11 Jur. N. S. 462 ; 13 L. T. Bep., N. S. 115.) 
 
 (/) Hendeuson v. Mostyn Copper Company. [1868] 
 
 The plaintiff being possessed of a patent, granted to the 
 defendants the exclusive licence to viork it in a certain district, 
 
LICENCE. 215 
 
 by a deed by whicli the latter covenanted to pay certain 
 royalties, and to give every information the better to enable 
 the patentee to support the letters patent; and the patentee 
 covenanted for quiet enjoyment of the patent by the defen- 
 dants, and that, "in case any person should work the patented 
 processes, the patentee would, at his own cost, commence and 
 carry on all such actions, &c., as should be necessary to establish 
 the valid it y of the patent, and to put a stop to the working of 
 the patented processes bj"^ such person ; and that, in case the 
 patentee should fail or neglect so to establish or maintain the 
 validity of the' patent, and to put a stop to the working of the 
 patented processes by such other person, he (the patentee) 
 would not call upon the defendants, nor should the defendants 
 be liable thenceforth to pay any royalty, until the patentee 
 should, by authority of law, or otherwise, have restrained such 
 person from working under the letters patent : " — Held, that the 
 condition fur suspension of payment of the royalties did not 
 come into operation until the patentee had notice of an infringe- 
 ment, and until after the lapse of a reasonable time to allow 
 him an opportunity of instituting proceedings to restrain it. 
 (L. B., 3 a P. 202.) 
 
 (g) Knowles v. Bovill. [1870] 
 
 The plaintiff was the holder of a licence to use a patented 
 invention from the patentee. The patentee intending to apply 
 for a prolongation of this patent, and also for a patent fur a 
 new invention of a similar description, the plaintiif agreed to 
 give him 150?. for the free use for ever of the former patent, 
 as well as for the free use for three years of the new patent 
 which the patentee was about to take out. The money was 
 paid to the patentee, but he died almost immeiliately afteiwards, 
 and in consequence of his death no application was ever made 
 fur a renewal of the former patent or the grant of one for the 
 new invention. The plaintiff brought an action against the 
 patentee's executors to recover back the money, on the ground 
 that the consideration for it had totally failed : — Held, that he 
 was entitled to miintain the action on the ground that, on the 
 true construction of the contract between the parties, he had 
 bought the right to have an application for the patents made, 
 , not merely the right to have the benefit of it if it should happen 
 ' to be made, and the consideration had therefore totally failed. 
 (22 L. T. Sep., N. S. 70.) 
 
 Qi) Hassall v. Weight. [1870] 
 
 "W., a patentee, granted to H. an exclusive licence to manufacture, 
 by a deed which was prepared by the solicitor of W. alone. _ This 
 deed was not registered -.—Held, that W. could not avail himself 
 of the non-registration of the licence as a defence to an action by 
 H. (40 L. J. Oh. 145.) (Per Cotton, L.J., in Heap v. Earthy, 
 6 0. B. 495. " In Bassall v. Wright it was not meant that a licence 
 was equivalent to an assignment.") 
 
216 LICENCE. 
 
 (i) Betts v. Willmott. Ch. [1871] 
 
 Where the owner of" a patent mamifactures and sells the 
 patented article in a foreign country as well as in England, the 
 sale of the article in one country implies a licence to use it in 
 the other. But if he has assigned his patent in either country, 
 the article cannot be sold so as to defeat the rights of the 
 assignee. (L. B., 6 Ch. 239 ; 19 W. B. 369.) 
 
 (J) EoDEN V. The London Small Arms Company. Q. B. [1876] 
 
 The plaintiff granted by deed to the defendants a licence to 
 use a patented invention for the manufacture of rifles, on pay- 
 ment of a fixed royalty, which the defendants covenanted to 
 pay for every rifle manufactured or produced " under the powers 
 hereby granted." At the time the deed was entered into, as 
 well as previously, the defendants had been manufacturing 
 arms, under contracts, for the British Government, in accord- 
 ance with the plaintiff's patent, and without paying royalties, 
 under the belief that they were legally entitled to do so; and ihe 
 deed itself, as the plaintiff knew, was intended by the defendants 
 to apply only to rifles exclusive of those manufactured by 
 the Government. Some years after it was decided that the 
 right of the Crown to the free use of a patent did not extend to 
 manufacturers fulfilling Government contracts, and the plaintiff 
 thereupon brought his action uiider the deed to recover roxalties 
 on all arms so manufactured from the time that the deed was 
 entered into ; — Held, that he was not entitled to recover ; for, 
 though the terms of the licence would, prima facie, be taken to 
 include every exercise of the patented invention, the words 
 " under the powers hereby granted," contained a latent am- 
 biguity, which admitted of parol evidence to show that the deed 
 was not intended to apply to rifles manufactured for the Govern- 
 ment: — Held, also, that, iriespective of the construction to be 
 put on the deed, there was a ' good equitable defence to the 
 claim. (46 L. J., Q. B. 213.) 
 
 (l) Clark v. Adie. Ch. [1877] 
 
 A patentee who grants a licence cannot, without derogating 
 from his grant, publish advertisements and circulars which 
 have the effect of deterring usual customers or the public from 
 dealing with his licensee. ('21 W. B. 456 ; affirmed on appeal, 
 21 W. B. 764.) 
 
 A liceni-ee under a patent cannot in any way question its 
 validity during the continuance of his licence. But lie may show 
 that what he has done does not fall within the limits of the 
 patent. (£. jB. 2 App. C. 423.) 
 
 (I) SocitTi. Anonymes des Manufactures de Glaces v. Tilghman's 
 Patent Sand Blast CoMrANY. C. A. [1883] 
 
 The defendants, who were owners of patents in Belgium and 
 England for an invention for making lamp globes, by a d^ed 
 
LICENCE. 217 
 
 executed in Belgium, granted a licence to the plaintiffs during 
 the continuance of the patent for twenty years (which clearly 
 pointed to the Belgian patent) to use and employ the said 
 invention which has been patented, at their manufactory, which 
 was situated in Belgium and not elsewhere : — Held, that ttiis 
 licence did not imply permission to sell the manufactured articles 
 in England in violation of the defendants' English patent. (25 
 Gh. B. 1 ; 63 L. J. m. 1 ; 49 i. T. 451 j 32 W. B. 71.) 
 
 (m) CotJCHMAN V. GrEEENEE. [1884] 
 
 Where a licensee disputes his liability to pay royalties,- the 
 question is, would the articles made by him be infringements of 
 the patent as it stands, and it is immaterial to say that the 
 articles would be within an older patent, because that amounts 
 to saying that the licensor's patent is bad, which he is not 
 entitled to do. (Qriff. 68 ; 10. B. 197.) 
 
 (w) Wakd v. Livesey. [1887] 
 
 The owners of a patent granted a licence under seal upon certain 
 terms and conditions, some of which were not complied with. , The 
 plaintiffs gave notice by letter to the defendants that the licence 
 was determined, but the defendants did not assent, and the 
 plaintiffs brought this action : — Held, that the licence was one 
 coupled with an interest and therefore not revocable at will, but 
 that the terms had in fact been broken, that the plaintiffs there- 
 upon became entitled to determine it, and that the letter, although 
 not under seal, wa.s sufficient for that purpose. (5 0. B. 102.) 
 
 (o) BOWN V. HUMBEE AND COMPANY. [1888] 
 
 The plaintiff having brought an action for infringement against 
 Humber and others, judgment was given against the defendants 
 by consent upon certain terms, and part of the order was that the 
 plaintiff should grant and the defendant should accept a licence to 
 use the invention at a certain royalty. Accordingly the plaintiff 
 granted to Humber and others, who were the assignors to the 
 present defendant company, a licence within the United Kingdom, 
 the Channel Islands and the Isle of Man, to make, use, exercise, 
 and put in practice the said invention for the purpose of applying 
 the said invention to the wheels of bicycles, tricycles and other 
 carriages manufactured for sale or use, or otherwise by the 
 licensees or by persons employed by them, but not in any other 
 manner. The licence was not to authorise the use of the invention 
 by the licensees individually and separately from each other, but 
 only by the licensees jointly or by such two or one of them as 
 should continue to carry on the business hitherto carried on by 
 the three licensees in partnership at Beeston, or the person or 
 persons or company from time to time carrying on such business : — ■ 
 Held, that the original licensees had a right to start a business 
 and to manufacture under the licence elsewhere than at Beesfon, 
 and that their assignees, the present defendants, were therefore 
 also entitled to do so. (6 0. B. 9.) 
 
218 LICENCE. 
 
 (p) Crosthwaite v. Steel. [1889] 
 
 The plaintiffs, who were patentees of an improved canopy for 
 fire-grates, entered into an agreement with the defendants that 
 they should he at liberty for ten years to manufacture grates with 
 the patent canopy, each of the grates to have stamped on it in a 
 prominent position " Crosthwaite's Patent." On a motion for an 
 interim injunction to prevent the defendants from selling grates 
 stamped inside, the defendants undertook not to sell grates having' 
 the patent canopy unless stamped in a prominent position; but 
 later on they found, as they alleged, that the canopies which they 
 were celling were the same as canopies manufactured before the 
 date of the plaintiffs' patent, and differed from the plaintiffs' patent 
 canopy in having side wings. The defendants at the trial attempted 
 to use the fact that these side winged canopies were known before 
 in order to show that the plaintiffs' specification must be read so 
 as not to include them. Seld, that between licensor and licensee 
 this could not be allowed when the specification was not ambiguous, 
 and that the defendants' canopies were in fact substantially the 
 same as that described in the plaintiffs' specification. (6 0. B. 190.) 
 
 (g) Otto v. Singee. [1889] 
 
 The plaintiff, when he had obtained provisional protection 
 only, granted by deed a licence to the defendant to use the inven- 
 tion, paying royalties, for a year certain, and further from year to 
 year during the continuance of the said letters patent to be granted 
 (if granted) for the said invention, or any prolongation or extension 
 thereof. The plaintiff covenanted to complete the letters patent, 
 but when before the Comptroller he admitted that he knew of the 
 claims of certain prior patentees to the use of tires with a helical 
 spring core and the introduction into an india-rubber tire of a 
 core of corrugated steel wire, and was compelled to abandon this 
 part of his claim. The defendant alleged that it was the use of 
 the invention so disclaimed that they intended to obtain in taking 
 the licence, and refused to pay royalties after the first j-ear : — Held, 
 that there was no ground for saying that there was a total failure 
 of consideration, and that there was no misrepresentation, and that 
 therefore the defendants were liable to pay the royalties. (6 
 T. L. iJ. 52 ; 7 0. B. 7.) 
 
 (r) Heap v. Hartley. C. A. [1889] 
 
 The patentee of a machine had granted an exclusive licence to 
 the plaintiff to use and exercise his invention within a certain 
 district for four years, with a conditional contract that if there 
 was any infringement either within or without the district the 
 patentee would allow the licensee to use his name in order to sue the 
 infringer, and the deed conferring the licence was duly registered. 
 The defendants bought machines outside the district from persons 
 who had purchased frora the patentee and brought them into the 
 district and used them there. The licensee brought this action to 
 restrain such user, and the action was dismissed : — Held, on appeal, 
 (1) that if the plaintiff relied on actual notice of the licence, the 
 
MERIT. 219 
 
 onus was on him to prove it, and that he had not done so ; (2) that 
 where, as in this case, there is only a licence not entitling the 
 licensee to take anything away, then it is merely an authority to 
 the licensee to do that lawfully which without the licence he could 
 not do, and is not a grant ; (3) that therefore the plaintiiF could 
 not sue except in the name of the patentee, and could not sue in 
 his name hecause the patentee's rights had not heen violated ; 
 (4) that it was not material to consider the effect of sect. 87 of 
 the Act of ] 883. (6 0. B. 495.) 
 
 («) Postcard Automatic Supply Company v. Samuel. [1889] 
 
 Where parties are negotiating as to a licence to work a patent, 
 and terms have been proposed and accepted by letter preparatory 
 to the execution of a formal document, the parties stand in the 
 same position in equity as if the legal document had been executed. 
 In this case an agreement had been arrived at, but the licence had 
 not been settled, and the defendant, who had not paid royalties, 
 set up as defences to an action for infringement of the patent 
 
 (1) that the articles were manufactured under the licence, and 
 
 (2) that the patent was invalid : — Held, that the defendant must 
 elect on which of these defences he would rely, and that the 
 plaintiffs were justified in revoking the licence, as the royalties 
 had not been paid. On the defendant electing to rely on the 
 second ground, held that he must remove the words " manufactured 
 under licence from the Postcard Company " from the machines. 
 (6 O. B. 56U.) 
 
 (s^) AsHWORTH V. Law. [1890] 
 
 The plaintiffs claim lieing against the defendants as licensees, 
 the defendants pleaded inter alia that if the patent was construed 
 so as to include what they were doing, it would be invalid for want 
 of novelty, and also that the patent was invalid : — Held, that these 
 pleas must be struck out as embarrassing. (7 0. B. 231.) 
 
 Limited grant in case of rival inventors, p. 150 (z). 
 
 Lunatic. Declaration by. Patents Act, 1883, sect. 99, p. 81. 
 
 Making. See Infringement by Making, pp. 156 to 163. 
 
 Manufacture. See under Subject Matt-r, pp. 491 to 500. 
 
 Materials to be used must be in the market, p. 219 (t). 
 
 (f) Dbrosne v. Fairie. 
 
 The materials described in the specification as those to which 
 the patented process is to be applied must be substances capable 
 of being ordinarily purchased in the market as articles of com- 
 merce. (1 Web. P. a 168.) 
 
 Memorandum of Alteration. See Amendment by Disclaimer, p. 15 
 amendment of, p. 29 (q). 
 
 Merit, of inventor, ground of extension, pp. 113 to IIG. 
 
220 METHOD. 
 
 Method of Obtaining Letters Patent. See Application, p. 33. 
 
 Minor. Joint patent granted to, p. 277 {a). 
 
 Misleading Specification. See under Specification, pp. 436 to 445. 
 
 Misrepresentation in Specification will avoid the patent, pp. 436 (»), 
 437 (i). 
 
 Model, 
 
 making patent machine as, no infringement, p. 156 (f) 
 
 public user of invention by exhibition of, pp. 232 (/), 242 (rf), 265 (n), 
 
 266 (s) 
 to be supplied to South Kensington if required, Patents Act, 1883, 
 
 sect. 42, p. 220. 
 
 Patents Act, 1883, Sect. 42. The Department of Science and Art may at 
 any time require a patentee to furnish them with a model of his invention on 
 payment to the patentee of the cost of the manufacture of the model ; the 
 amount to be settled, in case of dispute, by the Bodrd of Trade. 
 
 Monopolies, Statute of. See p. 491 
 Construction of, pp. 492 (h), 534 (»). 
 
 Mortgagee of patent need not be joined as plaintiff in action for infringe- 
 ment, p. 290 (e). 
 
 National policy is not a ground for refusing to grant an injunction, p. 340 (6). 
 
 New Trial. See Practice, pp. 378, 379. 
 
 New Use, application to. See under Subject Matter, pp. 522 to 532. 
 
 Notices, of objections. See Practice, pp. 299 to 318. 
 of intention to exhibit. See Rule 15, p. 94. 
 
 Novelty of Invention, 
 
 Novelty generally, 
 .need not be new out of England, p. 222 (u), (y), (x) 
 in principle of invention, p. 224 (d) 
 
 method of effecting a known object, p. 225 (/) 
 of application, p. 226 (i) 
 
 improvement and discovery, pp. 224 (e), 230 (z) 
 discovery without disclosure, pp. 224 (e), 233 (7i), 235 0'), 272 (A) 
 anticipation and infringement, pp. 154 (,/), 192 (o), 226 (/), 365 (if) 
 exhibition of similar but useless machine, p. 226 (m) 
 greater perfection of result, an indication ot, p. 499 (s) 
 prior user in England will invalidate Scotch patent, pp. 225 {g), 130 (u) 
 but prior user iu Natal will not invalidate English patent, p. 227 (ra) 
 largely increased sale is evidence oF, p. 228 (s) 
 alleged anticipation should be such as the patent if valid would prohibit, 
 
 p. 227 (i9) 
 ia analogous chemical process, p. 227 (?). 
 
 Want of, in a Part of an Invention, 
 when that part is material, pp. 228 (y), 230 (a) 
 
 immaterial, p. 229 (x) 
 when one patent includes several inventions, p. 228 (w) 
 in subsidiary invention, p. 231 (d") 
 when advantages only claimed, p. 232 (e). 
 
NOVELTY. 221 
 
 Public Us», 
 
 meaning of, pp. 235 (,/), (0, 236 (n), 242 (e) 
 
 by exhibition of a model, pp. 232 (/), 242 (d), 266 (s) 
 
 by experiments. See pp. 261 to 265 
 
 by sale. See pp. 265 to 267 
 
 when accidental, pp. 233 (g), 238 (r) 
 
 of abandoned invention, pp. 235 (Z), 241 (z), 262 (e) 
 
 need not continue to date of patent, pp. 235 (I), 236 (m), 262 (e) 
 
 in a private place, p. 236 (m), (m*) 
 
 by what number of persons, immaterial, p. 236 (m) 
 
 without sale, pp. 240 (s), 266 (i), (u) 
 
 manufacture of patent article by inventor prior to grant, pp. 234 (s), 238 
 
 (?), 242 (6) 
 by using the invention on a tricycle, p. 240 (u) 
 need not be generally known, p. 241 (j/). 
 
 Secret i7se— pp. 242 and 243. 
 Publication in a Book or Specification — 
 between date of patent and specification, p. 244 (/) 
 in foreign book deposited iu British Museum, pp. 244 (Jc), 258 (j) 
 published in England, p. 245 (ro) 
 
 abroad and sent to England, pp. 247 (m), 250 (a) 
 need not be sold, p. 250 (a) 
 single copy of, kept in obscurity, p. 245 (g) 
 whether written or printed, p. 245 (q) 
 
 in an abandoned provisional specification, pp. 248 (j/), 258 (p), (r) 
 where prior specification is insufficient, p. 250 (c) 
 of an imported invention, p. 246 (f) 
 need not have been seen by patentee, p. 245 (y) 
 description should be sufficient to produce patented article, pp. 245 (o), 
 
 247 («), (w), 248 (x), 249 (z), 250 (V), (c), 251 {d), (e) 
 where prior specification is insufficient, pp. 251 (/), 257 (m) 
 
 and never brought into operation, p. 257 (o) 
 what sufficient evidence of, p. 253 (h) 
 in an ojEcial report, p. 254 (i) 
 need not be used by public, p. 254 (i) 
 
 in German journal in library of Patent Office, pp. 256 (k), 259 (u) 
 whether description must be sufficient to sustain a patent, pp. 251 (/), 
 
 257 (m), 260 (a) 
 may be by a drawing alone without description, p. 259 (x). 
 
 Publication by Experiments — 
 
 when abandoned, pp. 233 Qi), 262 (e), 266 (s), 275 («) 
 
 when unsuccessful, p. 262 (e), (/), {g) 
 
 by patentee to test utility of invention, pp. 261 (d), 263 (i), (J) 
 
 or his agent, p. 242 (cZ) 
 after utility established, pp. 234 («), 237 (p), 263 (i) 
 by making samples, p. 264 (m) 
 by making a model, p. 265 (n). 
 
 Publication by Sale, 
 
 in a single instance, pp. 265 (p), (q), 266 (v) 
 
 for a foreign market, pp. 265 (p), 266 (s) 
 
 of a patent for a process, p. 266 (r) 
 
 where article made as a sample, p. 266 (w) 
 
 by a secret process, p. 237 (o) 
 
 offering for sale, p. 266 (0, («), W 
 A Question, for tie Jury—^T^. 267 and 268 (b) 
 Evidence of. See under Practice, pp. 361 to 363 
 
222 NOVELTY. 
 
 Novelty Generally. 
 
 (u) Hastings' Patent. [1667] 
 
 A patent was granted to Mr. Hastings " in consideration that 
 he brought in the skill of making frisadoes, as they were made in 
 Harlem and Amsterdam, beyond the seas, being not used in England, 
 that therefore he should have the sole trade of the making and 
 selling thereof for divers years, charging all other subjects not to 
 make any frisadoes in England during that time, by pain to forfeit 
 the same frisadoes by them made, and to forfeit also lOOZ., the one 
 moiety thereof to the Queen's Majesty, the other to Mr. Hastings." 
 This patent being infringed by certain clothiers, Mr. Hastings 
 "exhibited his English bill in the Exchequer Chamber against 
 them ; where, upon the examination of the clause, it appeared 
 that the same clothiers did make bales very like to Mr. Hastings' 
 frisadoes, and that they used to make them before Mr. Hastings' 
 patent ; for which cause they were neither punished, nor restrained 
 from making their bales like to his frisadoes." {Noy, B. 182 ; 
 1 Weh. P. a 6.) 
 
 (») Matthey's Patent. [Eliz.J 
 
 By this patent " it was granted unto him the sole making of 
 knives with bone hafts and plates of lattin, because, as the patent 
 suggested, he brought the first use thereof from beyond seas. Yet 
 nevertheless, when the wardens of the Company of Cutlers did 
 show before some of the council and some learned in the law, that 
 they did use to make knives before, though not with such hafts, 
 that such a light difference or invention should be no cause to 
 restrain them, whereupon he could never have benefit of this 
 patent, although he laboured very greatly therein." (Noy, B. 178 ; 
 1 Weh. P. a 6.) 
 
 (w) Humphrey's Patent. 
 
 A patent was granted to Humphrey " for the sole and only use 
 of a sieve or instrument for melting of lead, supposing that it was 
 of his own invention, and therefore prohibited all others to use 
 the same for a time. And because others used the like instru- 
 ment in Derbyshire, contrary to the intent of his patent, therefore 
 he did sue them in the Exchequer Chamber, by English bill. In 
 which Court the question was, whether it was newly invented by 
 him, whereby he might have the sole privilege, or else used before 
 at Mendiff, in the west country, which if it were there before used, 
 then the Court were of opinion that he should not have the sole 
 use thereof." (Noy,-B. 183 j 1 Weh. P. C. 7.) 
 
 (x) Daecy v. Allin. [1602] 
 
 " Where any man doth bring any new trade into the realm, or 
 any engine tending to the furtherance of a trade, that never was 
 used before, the king may grant to him a monopoly patent." {Noy, 
 E. 182; 1 Web. P. C. 6.) 
 
NOVELTY. 228 
 
 («/) EoBBUCK V. Stiei-ing. H. L. [1774] 
 
 Public user of an invention in England is sufficient to invalidate 
 a patent subsequently granted for the same invention in Scotland. 
 (Web. P. a 45 and 451, w.) 
 
 (z) LiARDET V. Johnson. N. P. [1778] 
 
 Tbe general question is, wbetber the invention was known and 
 in use before the patent. (Bull, N.P.76; 1 Web. P. C.53; 1 Carp. 
 
 P. a 35.) 
 
 (a) E, «. Arkwright. N. P. [1785] 
 
 Scire facias to repeal letters patent granted to the defendant. 
 The specification described various parts of machinery, but no 
 complete machine, and the defendant did not point out what parts 
 were new. BuUer, J., left the following questions to the jury : — 
 " First, whether this invention is new ? secondly, if it be new, 
 whether it was invented by the defendant ? " After commenting 
 upon the evidence, his lordship said : " Thus the case stands as to 
 the several component parts of this machine ; and if, upon them, 
 you are satisfied that none of them were inventions unknown at 
 the time this patent was granted, or that they were not invented 
 by the defendant, upon either of these points the prosecutor is 
 entitled to your verdict." (Bav. P. C. 61; 1 Web. P. G. 64; 
 1 Carp. P. a 63.) 
 
 (6) Hdddard v. Geimshaw. N. P. [1808] 
 
 Action for the infringement of a patent for a new mode of 
 making cables and other cordage. Ellenborough, C.J., in address- 
 ing the jury, said : " In inventions of this sort, and every other 
 through the medium of mechanism, there are some materials which 
 are common, and cannot be supposed to be appropriated in the 
 terms of any patent. There are common elementary materials to 
 work with in machinery, but it is the adaptation of those materials to 
 the execution of any particular purpose, that constitutes the inven- 
 tion ; and if the appliiation of them be new, if the combination in 
 its nature be essentially new, if it be productive of a new end, 
 and beneficial to the public, it is that species of invention, which, 
 protected by the king's patent, ought to continue to the person 
 the sole right of vending ; but if, prior to the time of his obtaining 
 a patent, any part of that which is of tbe substance of the inven- 
 tion has been communicated to the public in the shape of a speci- 
 fication of any other patent, or is a part of the service of the 
 country so as to be a known thing, in that case he cannot claim 
 the benefit of his patent." ... If, in his specification, the patentee 
 " appropriates more than his own, he cannot avail himself of the 
 benefit of it. . . . And if he states that which of itself is not new, 
 but old and known to the world, though it was unnecessary for 
 him to do so, having done so, he has overstepped his right, and 
 has included in his invention that which is not his invention; 
 in that respect his patent would be void." (Bav. P. C. 278; 
 1 Web. P. 0.86; 1 Carp. P. C. 225.) 
 
224 NOVELTY. 
 
 (c) Manton v. Manton. N. P. [1816] 
 
 Action for the infringement of two patents, one for a hammer 
 upon an improved construction, for the locks of fire-arms ; the 
 other, for " an improvement in double-barrelled guns." Gibbs, C. J.y 
 in directing the jury, said : " In order to support a right to the 
 exclusive enjoyment of any invention, it is necessary that the 
 party who takes out the patent should show that the invention is 
 new, that it was unknown tO' the trade and to the world before, 
 that it is not only new, but that it is useful to the public; and it 
 is necessary likewise that he should show that he has accurately 
 explained the nature of his invention in his specification, separating 
 that which is new from that which is old. (Bav. P. C. 343.) . . . 
 If any one man made these locks, and was in possession of the 
 secret of making them upon the same principle as Joseph Manton's 
 locks, there would be an end of the patent." (16. 353.) 
 
 (d) E. V. CuTLEE. Sci. fas. [1816] 
 
 Scire facias to repeal the defendant's patent for "improvements 
 in firegrates or stoves." The specification, after describing the 
 stove, claimed as the invention, the construction of stoves in such 
 manner as that the fuel necessary to supply the fire shall be intro- 
 duced from beneath, either in a perpendicular, or in an oblique 
 direction. Ellenborough, C.J., was of opinion that the evidence 
 showed grates to have been constructed, prior to the patent, on a 
 principle identical with that described in the specifii ation ; that 
 the patentee, by his claim, had confined himself to that principle, 
 which was not new, and that, therefore, the patent could not be 
 supported, although the application of the principle, as described 
 in the specification, was new. (1 Starh. 354; 1 Weh. P. C. 76; 
 1 Car^p. P. a 351.) 
 
 (e) Hill v. Thompson. [1818] 
 
 Dallas, J., in delivering the judgment of the Court of Common 
 Pleas, said : " This, like every other patent, must undoubtedly 
 stand on the ground of improvement, or discovery. If of improve- 
 ment, it must stand on the ground of improvement invented ; if of 
 discovery, it must stand on the ground of the discovery of something 
 altogether new ; and the patent must distinguish and adapt itself 
 accordingly. If the patent be taken out for discovery, when the 
 alleged discovery is merely an addition or improvement, it is 
 scarcely necessary to observe that it will be altogether void. . . . 
 If the discovery claimed were known and made use of before, the 
 patent is at an end. Now, with reference to this particular case, 
 it may be proper shortly to consider, what novelty and discovery 
 are deemed to be ; and when I say novelty and discovery, I mean 
 to distinguish between those terms ; for it is not enough to have 
 discovered what was unknown to others before, if the discovery 
 be confined to the knowledge of the party having made it ; but 
 it must have been communicated, more or less, or it must have 
 been more or less made use of, so as to constitute discovery, as 
 applied to subjects of this sort. The case of Dollond has been 
 
NOVELTY. 225 
 
 mentioned at tlie taT, as also Tennanfs patent for bleaching 
 liquor, and they stand so contrasted as to illustrate the distinc- 
 tion to which I allude." (2 B. Moo. 451; 8 Taunt. 394; 1 Web. 
 P. a 244.) 
 
 (f) HuLLET V. Hague. [1831] 
 
 When the object of two patents is the same, but the mode of 
 effecting that object, which is the thing claimed, is different, the 
 prior patent does not affect the novelty of the subsequent one. 
 
 A patent was taken out for improvements in evaporating sugar, 
 &c. The specification stated that the invention consisted in 
 forcing air through the liquid or solution subjected to evaporation 
 by means of pipes, whose extremities reach nearly to the upper or 
 interior area of the bottom of the pan or boiler containing such 
 liquid or solution, the other extremities of such pipes being connected 
 with larger pipes, which communicate with the bellows. The lesser 
 pipes were to be equally distributed, and their lower ends on a 
 level with each other. It was further declared, that the form of 
 the apparatus might be varied, provided the essential properties 
 were maintained : — Held, that taking the whole of the specification 
 together, it appeared that the invention consisted of the particular 
 method or process of forcing, by means of bellows, &c., air through 
 the liquid subjected to evaporation, viz., by pipes connected with 
 larger pipes, and placed as mentioned in the specification ; and, there- 
 fore, that it was not void because another patent had been before 
 granted to other persons for effecting the same object, by a coil of 
 pipes (lying at the bottom of the vessel), perforated with small 
 holes, or by a shaEow cullender placed at the bottom of the vessel. 
 (2 B. & Ad. 370.) 
 
 (g') Brown v. Annandale. H. L. [1842] 
 
 It is essential to the validity of a Scotch patent that the inven- 
 tion should be new in England as well as in Scotland. Accord- 
 ingly evidence of the public use of an invention in England prior 
 to the date of letters patent for Scotland is admissible, and will 
 invalidate such letters patent. (1 Web. P. G. 433; 8 CI. <& F. 
 437.) 
 (h) Newton v. The Grand Junction Eailwat Company. [1846] 
 
 Pollock, C.B. : " In order to ascertain the novelty, you take 
 the entire invention, and if, in all its parts combined together, it 
 answer the purpose by the introduction of any new matter, by 
 any new combination, or by a new application, it is a •novelty- 
 entitled to a patent." Alderson, B. :_"In considering whether 
 the invention is new, the proper mode is to take the specification 
 altogether, and see whether the matter claimed as a whole is 
 new. Now, the whole which may be new as claimed, may con- 
 sist in some degree of old parts, and in some degree of new 
 parts. The question of novelty, however, will depend on 
 whether the whole taken altogether is new, though it may in 
 part consist of old parts, provided the patentee does not claim 
 
 Q 
 
226 NOVELTY. 
 
 the old parts, but only the combination of them and the new." 
 (5 Exch. 334; 20 L. J,, Exch. 429.) 
 
 (j) Newton ®. Vauchee. [1851] 
 
 The defendant in 1839 obtained a patent for an improvement 
 in packing hydraulic and other machines by means of a lining 
 of soft metal, the effect of which was to make certain parts of 
 the machines air and fluid tight. Subsequently to this the 
 plaintiffs discoveied that the same soft metal had the effect of 
 diminishing friction, and of preventing the evolution of heat 
 when applied to the surfaces in contact of machines in rapid 
 motion and bubject to pressure ; and he embodied the applica- 
 tion of that discoveiy to machines in a patent, dated 1843. — 
 Meld, that as the plaintiffs application of the soft metal differed 
 essentially from that of the defendant, the plaintiff's patent was 
 new. (6 Ex. Bep. 859 ; 21 L. J., Ex. 305.) 
 
 (j) Daw v. Eley. Ch. [1867] 
 
 The antecedent existence of an invention which was so far 
 similar, that, if subsequent in date to the patent, it would have 
 been held a colourable and clumsy imitation for the purpose of 
 effecting the same result, did not invalidate the patent by antici- 
 pation, (i. Bep., 3 Eq. 496; 14 W. B. 126; 13 L, T. Bep., 
 N. S. 399.) 
 
 (h) Paekes v. Stetons. Ch. [1869] 
 
 When, in a patent for an entire combination, the novelty of 
 any individual part of the combination has to be determined, it 
 is best done by asking whether, upon the evidence, it could by 
 itself have been the subject of a valid patent. (L. Bep., 6 Cli. 38 ; 
 18 W. B. 234 ; 22 L. T. Bep., N. S. 639.) 
 
 (I) Oanningtok v. Nuttall. H. L. [1871] 
 
 The Lord Chancellor, moving the judgment of the House of 
 Lords, said : " I take it that the test of novelty is this : Is the 
 product which is the result of the apparatus for which an in- 
 ventor claims letters patent, effectively obtained by means of 
 your new apparatiis, whereas it had never before been effectively 
 obtained by any of the separate portions of the apparatus which 
 you have now combined into one valuable whole for the purpose of 
 effecting the object you have in view." (L. Bep., 5 H. L. 216.) 
 His Lordship considered the following direction to a jury to be 
 correct: "If a person takes well-known processes from a great 
 number of sources and a great many inventions, and adapts 
 them altogether to a perfectly new combination, for a perfectly 
 new purpose, their previous use is not an anticipation of the 
 patent." (Ih. 222.) (i. Bep., 5 H. L. 205 ; 40 L. J., Eq. 739.) 
 
 (to) Mureay v. Clayton. Ch. [1872] 
 
 Sir VV. M. James, L.J., in the course of his judgment in 
 this case, said ; " I am not aware of any principle or authority 
 upon which the exhibition of a useless machine which turns out 
 
NOVELTY. 227 
 
 a feilure can he held to affect tie rigiit of a patentee wlio has 
 made a successful machiue, although there may he a degree of 
 similarity hetween some of the details of the two machines." 
 (L. Bffp., 7 Ch. 581 ; 20 W. B. 650.) 
 
 (w) EoLLS V. Isaacs. [1881] 
 
 The district of Natal is a British colony with a separate 
 government under a Grovernor appointed . by the Crown, and a 
 law has been passed by the legislative counoU, providing for the 
 granting in the colony of patents for inventions : — Held, that the 
 validity of letters patent under the great seal for licence to use 
 an invention in the United Kingdom of Great Britain and 
 Ireland, the Channel Islands and the Isle of Man, would not be 
 impeached by the fact if proved of prior use of the invention in 
 Natal. (19 Gh. D. 268.) Brown v. Annandale 8 CI. & F. 437, and 
 Boebuch v. Stirling, lb. 446 (n) distinguished. 
 
 (o) Saxby v. The G-loucestbr Waggon Company. H. L. [1883] 
 
 The validity of the plaintiff's patent was disputed on the ground 
 of want of novelty. The plaintiff admitted that all the material 
 parts of his invention were to be found in two prior inventions, 
 but tried to show that the combination of these two inventions 
 required such skill and ingenuity as to entitle it to protection. 
 There being evidence that any person of ordinary knowledge of 
 the subject would be able to effect the combination without 
 further experiment: — Held, that the finding of want of novelty 
 could not be upset. (7 Q. B. B. 306; af&rmed on appeal, W. N. 
 1882, 102 ; 2 Oriff. 54 ; Good P. G. 417.) 
 
 (p) Young v. Eosenthal. [1884] 
 
 It is not necessary in order to anticipate a patent that the old 
 things should be exact and identical with the patent. Could the 
 patentee — that is not a bad test — stop the public from using them 
 under his patent ? If he could, and they had been used before, 
 then his patent is bad, because he has no right to stop the public, 
 who used it before. (Griff. 249 ; 1 0. B. 29.) 
 
 (q) Badische Anilin und Soda Fabrik v. Levinstein. H. L. 
 
 [1887] 
 
 The defendants alleged that though the particular substance 
 obtained by the plaintiff's patented process, was previously 
 unknown, yet that similar bodies arrived at by similar processes 
 were well known, and that chemical analogy would at once 
 indicate the supposed invention : — Held, that this only amounted 
 to saying that the inventor only completed by one step the route 
 to which chemical discoveries had been tending without his aid, 
 and did not invalidate the patent. (12 App. G. 710.) 
 
 (»•) GosNELL V. Bishop. C. A. [1888] 
 
 Patent for improvement in stretchers for trousers held not to 
 have been anticipated. Where there has been a long unsatisfied 
 
 Q 2 
 
228 NOVELTY : 
 
 demand, and suddenly ail article springs into existence and 
 satisfies it, it may be inferred that ingenuity was required to 
 Isurmount the ohstacle which would seem to have existed, 
 (5 0. B. 151.) 
 
 («) Ehelich v. Ihlee. C. A. [1888] 
 
 It was admitted that the parts of the plaintiff's invention were 
 not new, but the claim was for a combination ; 150,000 of the 
 plaintiff's instruments had been sold, and there had been no such 
 previous sale. The inference was irresistible that the instrument 
 supplied a want, and this was cogent, though not conclusive 
 evidence of novelty. {W- N. 1888, 50 ; 5 0. B. 437.) 
 
 (0 MOKGAN V. WlNDOVEE. H. L. [1890] 
 
 Patent for a combination of springs and elliptic springs in 
 the front part of a carriage held not to be new. The Court of 
 Appeal held (Coleridge, C.<I., diss.) that the anticipation alleged 
 was experimental. , The House of Lords declined to decide that 
 point, as they held that the invention was not subject-matter. 
 (W. N. 1887, 143 ; 1888, 80 ; 3 T. L. £. 748 ; 5 0. B. 295 ; 7 0. B. 
 131.) 
 
 (i^) DOWLING V. BiLLINGTON. [1890] 
 
 A patent for weaving wire mattresses by a particular method, 
 so as to distribute the strength evenly, was Jield by the Court of 
 Appeal in Ireland not to be anticipated by prior methods which 
 used the same machinery but did not obtain an even distribution 
 •of Strength. (7 O. JJ. 191.) 
 
 Want of Novelty in a Part of an Invention. 
 
 (u) Beamah v. Haedcastle. N. P. [1789] 
 
 The patent was for a water-closet upon a new construction. 
 It was objected that the patent, being taken for the whole water- 
 closet, the arrangement of some of the parts only being new, was 
 void. Kenyon, J., said : " Unlearned men look at the specifi- 
 cation, and suppose everything new that is there. If the whole 
 be not new, it is hanging terrors over them." The question for 
 the jury is, whether the principle of the invention, and the 
 means employed to effect the object to be obtained, are new; 
 whether the shape is new or not is immaterial. (Holroyd, 81 ; 
 1 Garp. P. a 168.) 
 
 (y) Hill v. Thompson. [1818] 
 
 Dallas, J. : " If any part of the alleged discovery, being 
 a material part, fail (the discovery in its entirety forming one 
 entire consideration), the patent is altogether void." (2 B. Moo. 
 457 ; 8 Taunt. 401 ; 1 Web. P. 0. 249.) 
 
 (w) Beunton v. Hawkes. [1821] 
 
 Patent for " certain improvements in the construction, making, 
 or manufacturing of ships' anchors, and windlasses, and chain 
 
Want of, in Part of Invention. 229 
 
 Cables or moorings." It was proved at Nisi Prius, ttat the 
 mode -of manufacturing anchors described in the plaintiff's 
 specification had never been applied before to ships' anchors ; 
 but had been applied to the adze-anchor, and the mushroom- 
 anchor. These anchors are used only for the, purpose of mooring 
 floating lights or vessels intended to be stationary, and are 
 bever taken on board. The jury having found a verdict for the 
 plaintiff, the defendant obtained a rule nisi for a new trial, which 
 the court afterwards made absolute. In his judgment, Abbott, 
 C.J., said : " I think so much of the plaintiff's invention, as respects 
 the anchor, is not new, and tliat the whole patent is, theiefore, 
 void. ... A man cannot be entitled to a patent for uniting 
 two things instead of three, where that union is effected in a 
 mode well known and long practised for a similar purpose. It 
 seems to me, therefore, that there is no novelty in that part of 
 the patent as affects the anchor, and, if the patent had been taken 
 out for that alone, I should have had no hesitation in declaring 
 that it was bad. Then, if there be no novelty in that part of the 
 patent, can the plaintiff sustain his patent for the other part, as 
 to the mooring chain ? As at present advised I am inclined to 
 think that the combination of a link of this particular form 
 with the stay of the form which he uses, although the form 
 of the link might have been known before, is so far new and 
 beneficial as to sustain a patent for that part of the invention, 
 if the patent had been taken out for that alone. But inasmuch 
 as one of the things is not new, the question arises, whether any 
 part can be sustained. It is quite clear that a patent granted 
 by the Crown cannot extend beyond the consideration of the 
 patent. The king could not, in consideration of a new invention 
 in one article, grant a patent for that article and another. 
 The question then is, whether, if a party applies for a patent, 
 reciting that he has discovered improvements in three things, and 
 obtains a patent for these three things, and in the result it turns 
 out that there is no novelty in one of them, he can sustain his 
 patent. It appears to me, that the case of Hill v. Thompson, which 
 underwent great consideration in the Common Pleas, is decisive 
 -upon that question (4 B. & Aid. 549.) .... The consideration of 
 the patent is the improvement in the three articles, and not in one ; 
 for an improvement in only one of them would render the patent 
 bad. The consideration is the entirety of the improvement of the 
 three ; and if it turns out there is no novelty in one of the improve- 
 ments, the consideration fails in the whole, and the patentee is not 
 entitled to the benefit of that other part of his invention." (lb. 
 552.) (4 B. & Aid. 541 ; 1 Carp. P. C. 405.) 
 
 (x) Lewis v. Maeling. [1829] 
 
 Parke, J. : " The objection to the patent, as explained by the 
 specification, may be thus stated. The patent is for several things, 
 one of which, then supposed to be useful, is now found not to be 
 so ; but there is no case deciding that a patent is on that ground 
 void, although cases have gone the length of deciding, that if a 
 
230 NOVELTY : 
 
 patent be granted for three things, and one of them he not new, it 
 fails in toto." (10 B. & C. 27 ; 5 M.& B.70; 4: C.&P.SS; 1 
 Web. P. G. -197.) 
 
 (2^) Kay v. Marshall. [1839] 
 
 Tindal, C.J. : " If part of what is claimed is not properly the 
 subject of a patent, or not new, the whole must be void." (5 Bing. 
 N. C. 501; "J Scott, 561.) 
 
 («) Gibson v. Brand. [1842] 
 
 Held, that, inasmuch as the patentees claimed eight several heads 
 of invention, in order to support their patent they were bound to 
 show that each of the parts was new. And that, if the patent be 
 for a new or improved process, and the jury find the process not to 
 be new but improved, semble that the patent is invalid. (4 M. & G. 
 179 ; 4 Scott, N. B. 844; 1 Web. P. 0. 631.) 
 
 (a) MuNTZ V. Foster. N. P. [1844] 
 
 Action for the infringement of a patent for " an improved manu- 
 facture of metal plates for sheathing the bottoms of ships." The 
 patentee declared the nature of his invention to consist " in making 
 the said plates for sheathing of an alloy of zinc and copper, in 
 such proportions and of such qualities as, while it enables the 
 manufacturer to roll the said compound metal into plates or sheets 
 less difficult to work, &c., renders the said sheathing less liable to 
 oxydation," &c. The plaintiff claimed " the manufacture of metal 
 plates or sheets for the purpose aforesaid, of an alloy of copper 
 and zinc in such proportions as will enable the manufacturer to 
 roll the said alloy while at a red heat, into sheets fit for the 
 sheathing of ships," &c. 
 
 Tindal, O.J., said to the jurj"- : " The only further objection is, 
 that hot rolling is made an essential part of the plaintiff's invention, 
 and is not new, inasmuch as that is pointed out in Collins's specifi- 
 cation, and has also been carried into practice — that that renders 
 the patent void. I cannot understand that if the invention consists 
 of various parts — that is, of the compound of the plates, and he 
 states, as he goes along, that it is an advantage that it will roll 
 hot — and the subject of it is, that it shall make an alloy for 
 sheathing — the rolling of it hot, that being known before, will 
 invalidate the patent." (2 Web. P. G. 112.) 
 
 (6) Templeton v. Macfarlane. H. L. [1848] 
 
 A patent was taken out for " a new and improved mode of 
 manufacturing silk, cotton, linen, and woollen fabrics.'' The 
 specification, and a disclaimer, set forth that the patentees claimed 
 " the mode hereinbefore described of producing or preparing stripes 
 of silk, cotton, woollen, or Unen, or of a mixture of two or more of 
 these materials, in such a manner that the weft, or lateral fibres of 
 both cut edges of each stripe are all brought up on one side, and 
 into close contact with each other, and the re-weaving of such 
 stripes with the whole fur or pile uppermost, into the surfaces of 
 carpets," &c. One of these processes was old. The judge directed 
 
Want of, in Part of Invention. 231 
 
 the jury, tliat if one was new, tlie patent nould be supported for 
 the combination of them, and would only be invalid if there had 
 been a public use of both before the date of the patent : — Seld, that 
 this direction was erroneous, and that the patent was void. (1 
 H. L. Cas. 595.) 
 
 (c) M'CoRMicK V. Gray. [1861] 
 
 The specification of a patent reaping machine described the 
 improvements as having for their object the holding of the straw 
 in a favourable position while being cut, and the mute conveniently 
 arranging, collecting, and disposing of it when cut. Underneath 
 a set of spear-head shaped fingers, placed at regular intervals apart 
 from each other, was placed the cutting-blade, formed of a thin 
 plate of steel, toothed upon its front edge and fitted into a groove, 
 the blade having perfect freedom to slide from one side of the 
 machine to the other. Wheel-gearing, being set in motion by the 
 horse attached to the machine, caused a reel or gatherer to revolve, 
 and so prevent the straws from being pressed forward when 
 coming m contact with the cutting-blade, which had a rapid 
 reciprocating motion imparted to it by the action of a crank and 
 connecting-rod. " It has been found (the specification stated) to be 
 of great advantage to have the cutting edge tuothed somewhat 
 similar to a sickle, and to have those teeth divided into sections 
 corresponding to the number of fingers, each section having one 
 half of the teeth inclined in one direction, and the other half 
 having the teeth inclined in the opposite direction." The inventor 
 claimed " the constructing and placing of holding-fingers, cutting- 
 blades, and gathering-reels respectively, as before described, and 
 the embodiment of those parts as so constructed and placed, all or 
 any of them, in machines for reaping purposes, whether such 
 machines are constructed in other respects as before described, or 
 however else the same may in other respects be constructed." 
 The published description of a previous patent machine stated it 
 to be " for improvements in that kind of the machine in which the 
 grain is cut by the serrated edge of a straight and vibrating cutter 
 operated by a crank, the grain being sustained by fingers. The 
 blade is serrated like a sickle, except that the angle of the teeth is 
 
 reversed for every alternate tooth The fingers for supporting 
 
 the grain are spear-formed." — Held (Brarawell, B., dissentiente), 
 that in an action for an infringement of the subsequent patent, the 
 defendant was, by reason of this prior publication, entitled to the 
 verdict on the plea that the manufacture was not new. — Held, 
 by Bramwell, B., that in the absence of proof that the machine 
 in its entirety was not new, the plaintiff was entitled to the 
 verdict on that issue, notwithstanding the want of novelty in its 
 separate parts. (7 H. & N. 25 ; 31 L. J., Ex. 42 ; 9 PF. B. 809 ; 
 4 L. T. Bep., N. S., 832.) 
 
 (d) Plimpton v. Spillee. C. A. [1877] 
 
 The patentee claimed, first, a mode of applying rollers and 
 runners to the footstand of skates, so that they might be cramped 
 
232 NOYELTT: 
 
 or turned so as to cause the skate to run in a curved line hy tie 
 canting or tilting of tlie footstand ; and, secondly, the mode of 
 securing the runners and making them reversible, as above 
 described. — Held, that, assuming that there was nothing novel in 
 the mode of securing the runners to the footstand, yet the want of 
 novelty in the second claim did not invalidate the patent, because 
 the second claim must be read as claiming a subsidiary invention 
 to be used only in connection with the principal invention. (L. B., 
 6 Ch. D. 412.) 
 
 Rrett, L. J., in delivering judgment, said : " I think it cannot 
 be denied that if a really independent claim of something which 
 is not new, however inadvertently or carelessly it be made, is in 
 fact made on the face of the patent, the Court is bound to hold 
 that the patent is therefore objeafcionable, and that therefore the 
 plaintiff cannot succeed. If this second claim had been in a form 
 which would have applied to the runner of any other skate than 
 that which is patented here, I should have thought it would have 
 been bad, and that therefore the whole patent would have been 
 bad, and that this plaintiff could never recover. ... If you can 
 say that the subsidiary claim in a patent cannot, under any circum- 
 stances, increase the monopoly of the patent itself which is well 
 claimed in the patent, it seems to me that the subsidiary claim is 
 unimportant, is futile, has no efl'ect, and, therefore, does not raise 
 any objection to the patent. If you can bring it within the 
 category of a subsidiary claim in the patent, you bring it within 
 the principle stated by Lord Westbury (Neilson v. Beits, L. B., 
 6 S. L. 21), and, under these circumstances, it is no objection to 
 the patent. I therefore consider that this second claim is no 
 oVvjection to this patent, because it is a futile claim, and has no 
 effect upon the monopoly." (lb. 433.) 
 
 (e) Feearson v. Loe. M. E. [1878] 
 
 Jessel, M. E. : " It does not follow that, because an inventor 
 thinks he has invented more than he has in fact, and describes 
 the advantages of his invention, and some of those advantages 
 arise from an old portion of the invention, it may not still be a 
 good patent, provided that the invention as claimed is so limited 
 as to fail to cover the actual thing in use, while it covers some of 
 the advantages mentioned ; in such a case it may still be a good 
 patent." (L. B., 9 Ch. D. 58.) 
 
 Public Use. 
 
 (/) Lewis v. Marling, [1829] 
 
 Action for the infringement of a patent for certain improve- 
 ments on shearing machines. It was proved by the defendant, 
 that the specification of a similar machine had previously been 
 enrolled in America, that a model of an exactly similar machine 
 had been exhibited to three or four persons in England, and 
 that a manufacturer in England had commenced the construction 
 of a machine from the American specification. This, however, 
 
Fvhlio Use. 233 
 
 ■rt'as never completed, and it was proved by the plaintiffs that 
 the same manufacturer had purchased the plaintiffs' machines. 
 Tienterden, C.J., in summing up to the jury at Nisi Prius, said : 
 " It is no doubt incumbent on the plaintiffs to show that their 
 machine is new, but it is not necessary that they should have 
 invented it from their own heads ; it is sufficient that it should 
 be new as to the general use and public exercise in tliis kingdom. 
 If it were shown that the plaintiffs had borrowed from some one 
 else, then, of course, their patent would fail. To show that the 
 machine was not new, evidence is given that a model has been 
 seen by three or four persons, and that the making of a similar 
 machine was begun ; but it appears to me, that the defendant 
 has failed to prove that such a machine was generally known or 
 generally used in England before the taking out of this patent 
 by the plaintiffs." (4 C. & P. 55 ; 10 B. d G. 26 ; b M. & B. 69 ; 
 1 Weh. P. a 492 ; 1 Garp. P. G. 477.) 
 
 (gr) MiNTEE V. Mower. N. P. [1835] 
 
 Action for the infringement of a patent which claimed " the 
 application of a self-adjusting leverage to the back or seat of a 
 chair, whereby the weight on the seat acts as a counter-balance 
 to the pressure against the back of such chair, as above described." 
 It was proved in evidence that a chair had been made by a 
 person of the name of Brown before the date of the patent, which 
 would have acted by a self-adjusting leverage if it had not been 
 encumbered by bad machinery. Lord Denman, C.J., said: "!■ 
 cannot conceive it would be very strong, even if he (Brown) had' 
 said he had discovered this principle of self-adjusting leverage, 
 when it does not appear he claimed it, took out any patent for 
 it, or that his master did, or that there was any production of the.' 
 article that could be beneficial to himself or Mr. Mower. It seems 
 that is a very strong argument to show that in point of fact they 
 had not made the discovery, at least how to make this principle 
 available for general use." (1 Web. P. G. 139.) " If that principle 
 (self-adjustment) might have been deduced from the machinery 
 of the chair that was made, but that it was so encumbered and con- 
 nected with other machinery that nobody did make that discovery 
 or even found out that they could have a chair with a self- 
 adjusting leverage, by reason of that or any other defect in the 
 chair actually made; I confess it seems to me that does not 
 prevent this from being a new invention, when the plaintiff says, 
 I have discovered, throwing aside everything but this self- 
 adjusting leverage itself, that will produce an effect, which I 
 think a very beneficial one." {Ih. 140.) 
 
 Qi) Cornish v. Keene. N. P. [1835] 
 
 Tindal, C. J., said : " The main question is, whether the principal 
 subject of the patent was or was not in use in England at the 
 time of granting these letters patent. Was it or was it not, in 
 the language of the Act of Parliament, such a manufacture (which 
 has a very wide and extended meaning — you may call it almost 
 
234 NOVELTY : 
 
 invention), was it or was it not such an invention, at the time • 
 of making the letters patent, as was current in use? If (the 
 invention) was at the time these letters patent were granted in 
 any degree of general use ; if it was known at all to the world • 
 publicly and practised openly, so that any other person might 
 have the means of acquiring the knowledge of it, as well as this 
 person who obtained the patent, then the letters patent are void ; 
 on the other hand, if it were not known and used at the time 
 in England, then, as far as this question is concerned, the letters 
 patent will stand. ... A man may make expei iments in his own 
 closet for the purpose of improving any art or manufacture in 
 public use ; if he makes these experiments and never com- 
 municates them to the world, and lays them by as forgotten 
 things, another person, who has made the same experiments, or 
 has gone a little further, or is satisfied with the experiments, 
 may take out a patent, and protect himself in the privilege of 
 the sole making of the article for fourteen years ; and it will be 
 no answer to him to say that another person before him made 
 the same experiments, and, therefore, that he was not the first dis- 
 coverer of it. . . . That would be an extreme case on one side. . . . 
 On the other hand, the use of an artiple may be so general as to be 
 almost universal. In a case like that, you can hardly suppose 
 that any one would incur the expense and trouble of taking out 
 a patent. ... It must be between those two limits that cases 
 will range themselves in evidence, and it must be for a jury to 
 say, whether, ... in any particular case, evidence which has been 
 brought before them convinces them to their understandings that 
 the subject of the patent was in public use and operation at that 
 time — at the time when the patent itself was granted by the 
 Crown. If it was in public use and operation, then the patent 
 is a void patent, and amounts to a monopoly, if it was not, the 
 patent stands good." (1 Web. P. 0. 508.) 
 
 (j) Morgan v. Seawaed. [1837] 
 
 Patent for " certain improvements in steam-engines, and in 
 machinery for propelling vessels." It was proved that, before the 
 date of the patent, Galloway, the patentee, ordered an engineer, 
 under an injunction of secrecy, to make two pairs of paddle- 
 wheels upon the principle of the patent. The wheels when com- 
 pleted were packed at the engineer's factory, and sold to, and 
 exported by, the plaintiff, who was the assignee of the patent, 
 and the managing director of a foreign company, by whom the 
 paddle-wheels were used abroad. The plaintiff paid the engineer 
 for the wheels. The question before the court was, whether the 
 invention, at the date of the patent, was new in the legal sense 
 of that word. Parke, B., delivering the judgment of the court, 
 said : — " The words of the statute are, that grants are to be good 
 ' of the sole working or making of any manner of new manu- 
 facture within this realm, to the first and true inventor or 
 inventors of such manufactures, which others, at the time of the 
 making of such letters patent and grants, did not use.' . . . The 
 
Pvhlie Use. 235 
 
 word ' manufacture ' in the statute must be construed in one of two 
 ways ; it may mean the machine when completed, or the mode of 
 constructing the machine. If it mean the former, undouhtedly 
 there has heen no use of the machine, as a machine, in England, 
 either by the patentee himself or any other person ; nor indeed 
 any use of the machine in a foreign country before the date of 
 the patent. If the word ' manufacture ' be construed to be the 
 mode of constructing the machine, there has been no use or 
 exercise of it in England in any sense which can be called public." 
 (2 M.&W.54A; 1 TFe6. P. C. 187; M.&H.bb; 1 Jur. 527.) 
 
 (J) Caepbntek v. Smith. [1842J 
 
 Action for the infringement of a patent for certain improve- 
 ments in locks. It was proved that a lock, substantially the same 
 as the plaintiff's, had been put upon a gate in a public place, and 
 used by Mr. Davies for many years before the date of the patent. 
 At Nisi Prius, Abinger, C.B., said : " I think what is meant by 
 ' public use and exercise,' as has been held by my predecessors 
 before (and I think one's own common sense leads one to adopt 
 that definition), is this : a man is entitled to a patent for a new 
 invention, and if his invention is new and useful, he shall not 
 be prejudiced by any other man having invented that before, 
 and not made any use of it; because the mere speculations of 
 ingenious men, which may be fruitful of a great varieity of in- 
 ventions, if they are not brought into actual use, ought not to 
 stand in the way of other men equally ingenious, who may after- 
 wards make the same inventions, and apply them." (1 Web. P. G. 
 634.) The defendant subsequently moved for a new trial, on the 
 ground of misdirection. The court, however, refused even a rule 
 nisi, and held, that " the public use and exercise of an invention, 
 means a use and exercise in public, not by the public." To invali 
 date a patent a prior user need not continue up to the time of 
 taking out the patent. (9 M. & W. 300 ; 1 Weh. P. G. 640.) 
 
 (A) Walton v. Bateman. N. P. [1842] 
 
 Cresswell, J., said to the jury : " With respect to this not being 
 a new invention, the nature of that objection is distinct and clear 
 upon the face of it. It involves two questions for your considera- 
 tion. First, was any article made before, answering tlie purposes 
 and having the properties of that, which the plaintiff has made 
 and claims as the patent? (1 Weh. P. G. 616.) .... Then even 
 supposing that that article did embody the principle of the plain- 
 tiff's, so as to present to persons using it the properties, qualities, 
 and advantages in principle of that article which the plaintiff 
 makes, the question for you will be, whether that user is not to be, 
 considered rather in the nature of an experiment than of any public 
 use of the article, so as to deprive the plaintiff of the fruit of thiS' 
 discovery in respect of this manufacture." (lb. 619.) 
 
 (l) The Househill Gompany v. Neilson. H. L. [1843] 
 
 Lord Lyndhurst, L.C., said : " If it is proved distinctly that a. 
 
236 NOVELTY : 
 
 macliine of tEe same kind was in existence, arid was in public uso^ 
 that is, if use or, if trials had been made of it in the eye and in the 
 presence of the public, it is not necessary that it should come 
 down to the time when the patent was granted. (1 Web. P. G. 
 709.) . , . . If it is discontinued, provided it has been once ia 
 public use, and the recollection of it has not been altogether lost, 
 it will be sufficient to invalidate the letters patent, although the 
 nse may be discontinued at the time when the letters patent were 
 granted. (lb. 710.) .... It must not be understood that your 
 lordships, in the judgment you are about to pronounce, have given 
 any decision upon this state of facts, namely, if an invention had 
 been formerly used and abandoned many years ago, and the whole 
 thing had been lost sight of. That is a state of facts not now before 
 us. Therefore, it must not be understood that we have pronounced 
 any opinion whatever upon that state of things." (lb. 717.) 
 
 (m) Stead v. Williams. N. P. [1843] 
 
 Action for the infringement of a patent " for mating or paving" 
 public streets and highways, and public and private roads, courts 
 and bridges with timber or wooden blocks." The defendants 
 proved that the porch of a private dwelling-house had been paved, 
 prior to the date of the patent, in a manner similar to that described 
 in the plaintiff's specification. Cresswell, J,, told the jury that, if 
 they thought this paving was essentially the same as that described 
 in the plaintiff's specification, the patent would be, in point of law, 
 invalid. " it was intended to be public, not to be made a matter 
 of merchandise certainly, but merely for his own private use ; but 
 the knowledge of it exposed to the public an article in public use, 
 and continued to be used down to the time in question. There- 
 fore, if you think that is the same thing in substance as that 
 which the plaintiff claims, I think that it was publicly used before, 
 and that he cannot have his patent. Whether it had been used by 
 one or used by five, I do not think it makes any difference." 
 (2 Web. P. a 136.) 
 
 (m *) Stead v. Anderson. N. P. [1846] 
 
 In this case, the facts, as regards user, were the same as in the 
 ease of Stead v. Williams. (See last case). Parke, B., in directing 
 the jury, said : " As to the alleged user, the only question is, that a 
 similar pavement had previously been laid down at Sir W. Wors- 
 
 ley's If the mode of forming and laying the blocks at 
 
 Sir W. Worsley's had been precisely similar to the plaintiff's, that 
 would have been a sufficient user to destroy the plaintiff's patent, 
 though put in practice in a spot to which the public had not free 
 access." (2 Web. P. C. 149.) 
 
 («) Hancock v. Somervell. N. P. [1851] 
 
 In directing the jury upon the issue of novelty, Williams, J., 
 said : " The defendants say that the iuvention had been substan- 
 tially published and was in use, not in secret use, but in public use 
 in England before the date of the patent ; and, if that is so, it 
 
Public Use. :237 
 
 would entitle the defendants no doubt to a verdict upon these 
 novelty issues. Upon that part of the case the view that it seems 
 to me ought to he taken by you is this: you will first consider 
 whether the material was before the pubUo, — it is not necessary it 
 should be used by the public — if it is in public use, not in secret 
 
 use If you should be of opinion the material was so before 
 
 the public, in public use, before the date of the patent, then the 
 question would be this : it is said on behalf of the plaintiff — first 
 of aU denying that there is any evidence of the material having 
 been at all in public use before the date of the patent, that even 
 if it were, so that although the material was before the public, 
 .yet the invention was not — that the invention required to be 
 discovered. On the other hand, on the part of the defendant, 
 what is said is this : that the material being in public use, the 
 ready means of the invention were also necessarily before the 
 public; because it is said that the article presented in itself 
 such means of knowledge to the public as to enable any one of 
 ordinary competence to re-produce the article. And if you should 
 come to the conclusion upon the facts that the material was in use 
 before the date of the patent, then the question resolves itself into 
 this : What is your opinion as to whether the publication of the 
 material was substantially a publication of the invention ? " 
 CNewton's London Journal, vol. 39, p. 158.) 
 
 (o) Heath v. Smith. [1854.] 
 
 Action for the infringement of a patent for certain improvements 
 in the manufacture of iron and steel. The defendant pleaded (inter 
 alia) that the invention was not new, but had been publicly and 
 generally used in England before the date of the patent. It was 
 proved at the trial that, before the date of the patent, five persons 
 had used the process independently, three of them without conceal- 
 ment, and that all five had publicly and generally sold, for their 
 own profit, the article thereby produced. Held, that, upon this 
 evidence, the plea was proved. Lord Campbell, C. J., in the course 
 of his judgment, said : " It is said that, according to judicial deter- 
 minations, the user must be public. If we are to make this addi- 
 tion to the statute (21 Jac. 1, c. 3, s. 6), has there not been a public 
 user within the meaning of the words ? Can a patent be granted 
 for a manufacture which other people have used, not indeed in the 
 market-place, but without any concealment whatever ? If this 
 user without concealment does not constitute a public use, what 
 does?" Erie, J., said : "If one party only had used the process, 
 and had brought out the article for profit, and kept the method 
 entirely secret, I am not prepared to say that then the patent 
 would have been valid." (3 Ell. & Bl. 256 ; 2 Weft. P. G. 268 ; 
 2 G. L. B. 1584; 18 Jur. 601 ; 23 i. J., Q. B. 166.) 
 
 (p) In re Adamson's Patent. Ch. [1856] 
 
 Adamson, whilst engaged in carrying into effect a contract for 
 the erection of a pier, invented certain machinery, which he used 
 on the works for several months before applying for a patent, 
 
238 NOVELTY : 
 
 during which time it was open to the inspection of the public. 
 Held, that the invention had been dedicated to the public, and that 
 he was not entitled to the patent. Lord Chancellor Cranworth, 
 in his judgment, said : " In this case the petitioner, by his own 
 showing, had publicly used the invention for four months, not for 
 the purpose of testing it by experiments, but in carrying out a 
 contract in which he was engaged, before he took any steps to 
 
 obtain a patent for it If the stage (the subject of the 
 
 patent) had been raised simply for the purpose of testing the in- 
 vention, though the inventor had been obliged to let it be seen by 
 the public, the publicity so given to it would have formed no 
 objection to the granting of the patent." (6 De G. M. & 0. 420 ; 
 25 L. J., CJi. 456.) 
 
 (g) Betts v. Menzies. [1859] 
 
 Action for the infringement of a patent for making capsules. 
 It was proved that between the time of the application for, and 
 the issuing of the letters patent, the plaintiff manufactured a 
 quantity of the capsules in the making of which he had discovered 
 improvements. They were made by his own workmen, and were 
 not sold before the patent was granted. The defendant having 
 obtained a rule to set aside the verdict, it was held, that the 
 manufacture of capsules by the plaintiff, prior to the grant, did 
 not invalidate the patent. (1 Ell. & Ell. 990 ; 28 L. J., Q. B. 361 ; 
 6 Jur., N. S. 1164.) Lord Campbell, C.J., delivering judgment 
 upon the point, said : " Under these circumstances, I am of 
 opinion that the manufacturing of the capsules according to the 
 new invention would not invalidate the patent. I quite agree that 
 if you look at the section of the Statute of Monopolies which has been 
 referred to (sect. 6) . . . the reservation which must be relied upon 
 here is this, ' which others at the time shall not use.' Now, others 
 had not used this before the patent was granted. It was used only 
 by the inventor, the patentee himself, and the use of it by the ser- 
 vants and mechanics whom he employed must be considered to have 
 been his use, and therefore it was not used by others. But still, 
 if it could be shown that the effect was really to extend the time 
 of the monopoly, that would be fatal. But the defendant has 
 entirely failed in showing that, because any person might have 
 used this manufacture lawfully, until the patent was sealed, and 
 the fourteen years had begun to run, there was a period of more 
 than fourteen years, during which the monopoly existed. That 
 period was not in the slightest degree exceeded, and no incon- 
 venience or grievance is caused to any one individual nor to the 
 country, by saying that this manufacture of the capsules according 
 to the new process before the patent was sealed, shall not invali- 
 date the patent." (1 Ell. & Ell. 1008 ; 28 L. J., Q. B. 365 ; 6 Jur., 
 N. S. 1065.) 
 
 (r) Harwood v. The Great Northeen Eailway Company. H. L. 
 
 [1860-1865] 
 
 The plaintiffs were the executors of Wild, to whom a patent 
 
PubUo Use. 239 
 
 had been granted for " improvements in fishes and fish joints iov 
 connecting the rails of railways." The fishes were made of iron, 
 with a groove on the outer surface, for the purpose of preventing 
 the square heads of the holts, passing through them and the rail, 
 from turning round, and also for the purpose of procuring greater 
 strength with an equal weight of metal than could have been 
 obtained from a fish of the same thickness throughout. Before 
 these letters patent had been granted, grooved iron plates, with 
 bolts let into the groove, had been used for the purpose of fastening 
 timbers placed vertically upon one another, or placed horizontally 
 side by side. In one case of a bridge, a channelled plate with bolts 
 had been used for the purpose of fishing a scarf joint where the 
 ends of two timbers met together, but it had not been used with 
 the view either of fixing the heads of the bolts, or with the view 
 of obtaining greater strength with an equal weight of metal. 
 The Court of Queen's Bench held, that this was not a prior use 
 which would invalidate the patent. (29 L. J., Q. B. 198; 6 Jur., 
 N. S. 993.) Cockburn, C.J., thus expressed himself upon this 
 point : " Now the question is, whether the accidental use of a 
 particular piece of machinery, forming part of, or the whole of, 
 the mechanical contrivance, which may be applied afterwards to 
 some ulterior purpose, without any intention of producing the 
 result, is such an anticipation — such a user — of the invention, as 
 shall prevent a patent. I entirely concur with my brother 
 Blackburn — that it turns upon what is the meaning of the language 
 to be found in the Statute of Monopolies ; that a man shall not 
 have a patent for that which others do use at the time he takes 
 out his patent. What is the meaning of that ? Surely it must 
 be construed to mean, what others have invented and used for 
 the purpose for which the man who afterwards comes forward 
 as the inventor, and claims to have a patent, and obtains a 
 patent, intends to use it." (29 L. J., Q. B. 199.) Blackburn, J., 
 in the course of his judgment, said: " The word 'manufacture' 
 has been frequently considered, and it extends not only to 
 principles that may be supposed to be patented, but to the 
 modes of applying those principles, in practical use, in the result. 
 But when you look at the ' use,' it must be that kind of 
 use which a man has when he uses a manufacture. I cannot 
 think that a man can use a manufacture in the sense in which the 
 words must be understood in tliis Act, and as they would be under- 
 stood by any man using them, because accidentally, and without 
 in the least degree intending it, he does that thing which, if it 
 were habitually done on purpose, and for the purpose of trade, 
 . would be a manufacture. I cannot think there is a use, either 
 public or private, in that sense, unless there be some knowledge 
 and some intention. ... I would not be understood to say, that 
 I think it is at all essential for the public use of a manufacture 
 that a man who really uses it intending to use it, should, at the 
 time have full knowledge of all the advantages that will arise 
 from the user. I can easily imagine many cases in which he 
 mio-ht use the thing as a manufacture, although there were many 
 
240 NOVELTY : 
 
 incidental advantages wMoh he was not aware of, and tliat user 
 , might prevent another person from taking out another patent for 
 those inoidental advantages afterwards." (29 L. J., Q. B. 202.) 
 On appeal to the Exchequer Chamber it was held, that the patent 
 was bad, as, even without reference to the case of the hridge, the 
 use of grooves in pieces of iron for holding materials together by 
 means of bolts and nuts, had been given to the world, together 
 with all its advantages, before the date of the patent in question. 
 "Willes, J., who delivered the judgment of the court, said : " We 
 by no means say that prior use of an invention is to be of no avail 
 because the principle upon which it acts was either unknown or 
 misapprehended." (31 L. J., Q. B. 198 ; 8 Jur., N. S. 1126.) 
 This judgment was affirmed in the House of Lords, upon the 
 general question of prior use, without reference to the special 
 point raised by the judgments of the judges in the Court of Queen's 
 Bench. (11 H. L. Gas. 654; 35 L. J., Q. B. 27 ; 12 L. T. Bev., 
 
 N. s. in.) 
 
 (s) Betts v. Neilson : Betts v. De Vitee. Ch. [1868] 
 
 In order to establish the prior public use of a patented article, 
 so as to invalidate the patent, it is not necessary to show that the 
 article had been manufactured for sale. (L. Beji., 3 Gh. 429 ; 
 37 L. J., Eq. 321 ; 18 L. T. Sep., N. S. 165.) 
 
 (t) Baelow v. Batlis. [1870] 
 
 In an action for infringement of a patent for a machine for 
 manufacturing nuts by a single operation, it was shown that a 
 machine had been patented in 1852 for the same purpose by one 
 Berry. The jury being asked whether Berry's ever was a machine 
 or invention in this sense that a workman could from his specifioa- 
 
 , tion and drawings make the machine described so that it would 
 more or less badly do the work required of it, found that it would 
 
 ' not. Held, that judgment was rightly entered for the plaintiff on 
 the question of anticipation. {Griff. 44.) 
 
 (m) Beeeeton v. Eichardson. [1884] 
 
 An improved method of driving a tricycle by means of pedals 
 and cranks, which was the invention claimed, had been used by 
 one, Jackson, on a tricyle, which was so well known in the neigh- 
 bourhood of Maiden as to be called Jackson's patent threshing- 
 machine: — Seld, to be a public user. Field, J. : "I quite understand 
 that, if there were at this moment an axle running under an 
 omnibus, which I could not see, it might or might not be a public 
 user. I think it would be a public user." {Griff. 54 ; 10. B. 
 166 at p. 174.) 
 
 {v) Ceoysdale v. Fishek. [1884] 
 
 Whether a patent is anticipated by a specification, or by publica- 
 tion in a book, or by previous user, the principle is the same; 
 because in each case it must be shown that some person has com- 
 municated to the public that which the patentee claims. But there 
 
PuUie Use. 241 
 
 is a vast difference in the application of the principle ; for, in 
 cases of user, it does not profess that there is a publication to the 
 world. The more, perhaps, as different modes of refinement and 
 variations and improvements continue to multiply, the more does 
 it happen that one portion of the manufacturing world does not 
 know what is being done by another portion. Still more, does the 
 public not know, with great nicety^ what is going on in the 
 laboratories or manufactories attached to any particular trade. In 
 order to form a disclosure by user, then it is not necessary that the 
 user should be by the public proper, provided only, that it is a user 
 in public, as contra-distinguished from a mere experimental user, 
 with a view of patenting a thing which may or may not be 
 existing, (Griff. 73 ; 1 0. JR. 17.) 
 
 (w) EOWCLIFFE V. MOEKIS. [1885] 
 
 A patent, granted for improvements in frames for spring mat- 
 tresses : — Held, to have been anticipated by prior use of different 
 bedsteads. (3 0. B. 17.) 
 
 (x) G-uiLBEET Maetik V. Eere. [1886] 
 
 Patent for a gauge glass, backed v.rith a stripe of red enamel on 
 a white enamel ground : — Seld, to have been anticipated by the 
 public use of similar gauge glasses, made under a patent for a 
 gauge glass with a white or coloured enamel back. (4 0. iJ. 18 ; 
 3 T, L. B. 87.) 
 
 (y) HuMPHBESON V. Sybe. C. a. [1887] 
 
 In an action for infringement of a patent for an improved waste 
 water preventer, the defendant was the owner of a similar invention, 
 for which he obtained provisional protection about six weeks before 
 the date of the plaintiff's patent, and which he used publicly before 
 the same date : — Held, that the plaintiff's patent was invalid, on 
 the ground that the combination was the same as that which the 
 defendant had publicly used, with a modification which was not the 
 subject of a patent. Fry, L.J. : " Is it the fair conclusion from 
 the evidence that some English people, under no obligation of 
 secrecy arising from confidence or good faith towards tbe patentee, 
 knew of the invention at the date when the plaintiff took out his 
 patent. That appears to me to be the question." (4 0. B. 184, 
 407, at p. 414.) 
 
 (z) MOEGAN V. WiNDOVEE. C. A. [1888] 
 
 If there is a complete anticipation by prior user the abandon- 
 ment of it is nothing. (5 0. B. 296 ; 3 T. L. B. 748.) 
 
 (a) PoDMOEE V. Weight. [1888] 
 
 Prior user by the defendants proved, of a machine for manu- 
 facturing the top notches of umbrellas patented by the plaintiff. 
 (5 0. B. 380.) 
 (6) Badham v. Bied. [1888] 
 
 The plaintiff's patent was for combined manhole covers and 
 ventilators for sewers : — Held, to have been anticipated by prior 
 user of articles similar in all essential points.. (6 0. B. 238.) 
 
 E 
 
242 NOVELTY : 
 
 (fc) Cheetham v. Oldham and Fogg. [1890] 
 
 The plaintiff's patent was for improvements in tlie manufacture 
 of felt hats : — Reld, to have been anticipated by hats made by a 
 similar process and sold in the ordinary course of trade. (7 0. B. 
 116.) 
 
 Secret Use. 
 
 (c) Tennant's Case. [1802] 
 
 Action for the infringement of a patent for a method of making 
 a bleaching liquor. The general ignorance of bleachers with 
 respect to such bleaching liquor, until after the date of the plain- 
 tiff's patent, was proved. On the part of the defendant it was 
 established, that a bleacher had used the same means of preparing 
 his bleaching liquor for five or six years anterior to the date of 
 the plaintiff's patent, but that he had kept his method a secret 
 from all but his two partners, and two servants employed in pre- 
 paring it ; and a chemist at Glasgow deposed, that he had suggested 
 to the plaintiff a material part of the method which formed the 
 subject of the patent. Ellenborough, C.J., nonsuited the plaintiff 
 on two grounds — first, that the process had been used five or six 
 years prior to the date of the patent; and secondly, that the 
 plaintiff was not the inventor of an indispensable part of the 
 process. (Cit. Bav. P. C. 429 ; 1 Web. P. C. 126 ; 1 Carp. P. G. 
 177.) 
 
 (d) Bentley v. Fleming. N. P. [1844] 
 
 If the inventor of a machine lend it to another in order to have 
 its qualities tested, and that other use it for some weeks in a 
 public workroom, this is not giving the invention such publicity 
 as to deprive the inventor of his right to obtain letters patent for 
 it. (1 a & K. 587.) 
 
 (e) Smith v. Davidson. [1857] 
 
 Action for infringement. The jury found that the improvements 
 used by the defenders, the same as those independently invented 
 and patented by the pursuer, were invented by the defender 
 Davidson before November 14th, 1853, the date of the pursuer's 
 provisional specification. That Davidson did not use his invention 
 for the purposes of his trade before November 14th, 1853; but 
 that the machine invented by him was capable of being so used 
 before that date. That Davidson used his invention for the 
 purposes of his trade between November 14th, 1853, and Feb- 
 ruary 1st, 1854. 
 
 Held, that neither the secret user before November 14th, nor the 
 public user after, invalidated the pursuer's patent. The Lord 
 President said : " In order to invalidate letters patent on the 
 ground of previous use, it is necessary not only that the use shall 
 have been prior to the date of the letters patent, but that it should 
 be a public and not a secret use. Accordingly, in this case, the issue 
 puts the question, ' Whether improvements substantially the same 
 
Secret Use. 243 
 
 as those mentioned in the letters patent and specification, were 
 known and used within the United Kingdom prior to the date of 
 the said letters patent ? ' Now, ' known and used' means known; 
 to the public, and openly used. The jury have by their verdict 
 fixed the nature and extent of the use. They find that, prior to 
 14th November, 1853, the machine invented by Davidson was 
 capable of being used for the purposes of his trade, but was not so 
 used until after that date, and they have not found that it was 
 used for any other purpose before that date, nor does it appear that 
 it had been published or made known before that time. Indeed it 
 appears from the evidence that Davidson at that time contemplated 
 applying for a patent, and, consistently with that, he could not do 
 otherwise than avoid publication of his invention. His experiments 
 were over, and the invention was complete and ready for publi- 
 cation and to be put in use, but it was not so published or used. 
 In these circumstances, it cannot be held that, prior to the 
 14th of November, the improvements patented by the pursuer 
 were ' known and used ' in the sense of the issue, or in any sense 
 which could be held as invalidating the letters patent." (19 G. S. 
 691.) 
 
 (/) Hills v. London Gaslight Company. N. P. [1860] 
 
 BramweU, B., at the trial at Nisi Prius, said to the jury : " If a 
 person has invented anything which is the subject of a patent and 
 has kept it to himself, or communicated it privately to one or two^ 
 in fact, has not made it public knowledge, if anyone else discovers 
 that invention, it is new, that is to say, new in the sense that the 
 first invention has not been published." And again : " If a man 
 practises his invention privately, or by way of experiment only, 
 such a practising would not be a publication of the invention, so 
 as to prevent a person subsequently finding it out from being 
 the inventor of new matter, the subject of a patent." (5 E. & N, 
 336.) 
 
 (g') PouPAED V. Faedell. Ch. [1869] 
 
 A pitent for improvements will not be bad on the ground of prior 
 user, though the use of an article of the same kind be proved, 
 with appendages exactly answering the words of the specification^ 
 if the appendages to the article previously used had a difierent 
 object to that of the patented improvements, and did not produce 
 the same effects. (18 W. B. 127.) 
 
 (A) Saxby v. G-loucestep. "Wagon Company. H. L. [1888] 
 
 The anticipation alleged consisted in drawings of a signalling 
 apparatus made by the London and North Western Eailway 
 Company, and a working model made for use at a siding. All the 
 company's servants were sworn to secrecy, and the drawings were 
 seen only by them : — Held, that as the user was not for the 
 purpose of experiment the secrecy made no difference, and that 
 there had been publication. (2 Oriff. 54.) 
 
 E 2 
 
244 NOVELTY : 
 
 Publication in a Booh or Specification. 
 
 Qi) E. V. Aekweight. Scire facias. [1785] 
 
 Buller, J., said : " It is admitted that (this) is not a new dis- 
 covery, for Emerson's book was produced, which was printed a 
 third time in 1773, and that is precisely the same as this." (1 Web. 
 P. G. 72.) 
 
 (*■) Hill v. Thompson. [1818] 
 
 Held, that a book printed and published, prior to the grant of 
 the patent, which in substance informed the public of what the 
 specification of the patent professed to inform them, completely 
 negatived the novelty of the alleged invention. (2 P. Mo. 424 ; 
 8 Taunt. 375; 1 Web. P. 0. 239.) 
 
 (J) CoENiSH V. Kebne. [1837] 
 
 The defendants put in evidence the specification of a prior patent 
 obtained by the plaintiff, which, the defendants alleged, described 
 the invention for which the patent in question was granted. 
 Tindal, C.J., in addressing the jury, said : " Undoubtedly, if you 
 could show under the hand of the plaintiff, or anybody's hand, 
 that the secret had been publicly communicated to the world which 
 was intended to be covered by the subsequent patent, there is an end 
 of that patent ; if the world at large had been informed by the 
 specification of the colour, fabric and manufacture, which is 
 intended to be effected by the subsequent patent, the subsequent 
 patent must fall to the ground, otherwise a man would have 
 nothing to do but to take out patent after patent when the former 
 has nearly expired, and so afterwards procure to himself an un- 
 limited privilege." (1 Weh. P. 0. 610.) On a motion for a new 
 trial in the Court of Common Pleas, it was Held, that a patent will 
 iot be set aside for want of novelty by proof that after the date of 
 the patent, although before the date of the specification, the invention 
 was described or mentioned in the specification of some prior 
 patent. (3 Bing. N. C. 670; 4 Scott, 337; 2 Hodg. 281; 1 Web. 
 P. C. 513 ; 2 Carp. P. C. 371.) 
 
 (F) Heoeteloup's Patent. [1836] 
 
 It would seem that the deposit of a foreign work in the British 
 Museum, which work contained the specification of a French patent 
 for an invention, in great part the same as that for which a patent 
 had subsequently been obtained in England, was sufficient to 
 vitiate the latter patent on the ground of want of novelty. (1 Web. 
 P. a 553.) {Vide inf. pp. 258 (q) and 259 (m).) 
 
 (I) MoEGAN V. Seawaed. [1837] 
 
 Alderson, B., referring to the case of Dollond's patent, cited in 
 Boulton V. Bull, said : " If Dr. Hall had published his discoveries 
 in a book, I apprehend that would have put an end to Pollond's 
 patent." (2 M. & W. 664; 1 Web. P. G. 190.) 
 
Pvhlieation in a Book or Specification. 245 
 
 (m) The Househill Company «. NSilson. H. L. [1843] 
 
 Lord Lyndhurst said : " If the macliiiie is published in a book, 
 distinctly and clearly described, corresponding with the description 
 in the speciiication of the patent, though it has never been actually 
 worked, is not that an answer to the patent ? It is continually the 
 practice on trials for patents to read out of printed works, without 
 reference to what has been done." 
 
 Lord Brougham : " It negatives being the true and first inventor, 
 which is as good as negativing the non-user. The book that is 
 generally referred to is, the ' Eepertory of Arts and Sciences.' It 
 must not be a foreign book, but published in England." (1 Web. 
 P. a 718 n.) 
 
 (w) Jones «. Berger. [1843] 
 
 Maule, J. : "I think it is an objection to the patent, and not 
 evidence simply of an objection, that there has been a previous 
 patent and a specifi.eation enrolled, and therefore published being 
 enrolled, containing the Invention." (1 Web. P. G. 550 ; 6 Scott, 
 N. B. 219.) 
 
 (o) MUNTZ V. TOSTER. Ch. [1843] 
 
 The novelty of a patent is not impeached by a similar process, 
 described in a previous specification, which will not, when carried 
 out, produce the patented article. (2 Web. P. G. 94.) 
 
 (p) MuNTZ V. Foster. N. P. [1844] 
 
 If a patentee has had his mind furnished with the material of 
 his invention by a prior specification, and has merely put it into a 
 more detailed shape, it would neither be a new invention, nor would 
 he be the first and true inventor. (2 Web. P. G. 107.) 
 
 (5) Stead v. Williams. [1844] 
 
 Action for the infringement of a patent granted to the plaintiff 
 for " making or paving public streets and highways, and public 
 and private roads, courts and bridges, with timber or wooden 
 blocks." Cresswell, J., directed the jury to consider : first, whether 
 the publications relied on by the defendant came to the knowledge 
 of the plaintiff J secondly, if they did, whether they disclosed that 
 for which he claims a patent ; for although he may have read 
 those, if they do not disclose that which is the essential part of his 
 patent, then it does not invade at all his privilege of having a 
 patent right. Verdict for the plaintiff. (2 Web. P. G. 130.) A 
 rule was subsequently obtained, and made absolute, for a new 
 trial, on the ground of misdirection. The defendant's counsel 
 contended that the mere fact of a prior publication is conclusive 
 against the validity of the patent, though the patentee might have 
 no knowledge of the existence of such prior publication. The 
 Court of Common Pleas held that, " If the invention has already 
 been made public in England, by a description contained in a 
 work, whether written or printed, which has been publicly civcu- 
 
246 NOVELTY : 
 
 lated, in such case the patentee is not the first and true inventor 
 within the meaning of the statute, whether he has himself bor- 
 rowed his invention from such publication or not ; because we 
 think the public cannot be precluded from the right of using such 
 informatidn as they were already possessed of at the time the 
 patent was granted. It is obvious that the application of this 
 principle must depend upon the particular circumstances which 
 are brought to bear on each particular case. The existence of a 
 single copy of a work, though printed, brought from a depositoiy, 
 where it has long been kept in a state of obscurity, would afford a 
 very different inference from the production of an encyclopaedia, or 
 other work in general circulation. The question will be, whether 
 upon the whole evidence there has been such a publication as to 
 make the description a part of the public stock of information." 
 (8 Scott, N. B. 472 ; 1 M. & Gr. 842 ; 2 Web. P. C. 142 ; 8 Jur. 
 933 ; 18 L. J., a P. 220.) 
 
 (r) Stead v. Anderson. [1847] 
 
 The first person who discloses an invention to the public is con- 
 sidered as the inventor. A knowledge and publication after the 
 plaintiff's invention does not avoid a patent granted to the true 
 and first inventor, who, having invented, obtained his patent 
 before his invention was used. (16 L. J., C. P. 250 ; 2 Web. P. G. 
 151.) A prior invention, in order to avoid a patent, must have 
 become known in the sense that it has become known to the people 
 in the trade. (2 Web. P. G. 148.) 
 
 (s) DoBBS V. Penn. [1849] 
 
 A patent granted to A. for " improvements in the construction 
 of racks and pulleys for window-blinds and other useful purposes," 
 besides claiming a mode of making the frames, by constructing 
 them in a particular manner of drawn open metal tubes, claimed a 
 mode of fixing the pulley in the frame, by turning the knob of the 
 spindle, upon which the pulley revolved, and thereby of screwing 
 a piece of metal, made to slide within the frame, tight to the edge 
 of the frame ; by which means the pulley spindle became firmly 
 fixed to the frame. By a patent previously granted to B., the 
 same object was effected by a similar method, but with the addition 
 merely of a piece of thin metal, called an escutcheon, which worked 
 outside the frame ; but the specification stated, that the pulleys 
 might be made without the escutcheon. Held, that the two 
 patents were substantially the same as to one of the things 
 claimed, and therefore that A.'s patent was void. (3 Exch. 427.) 
 
 (t) In be Lamenaude's Patent. [1850] 
 
 Lord Brougham : " You may have a patent as the importer of a 
 foreign invention, because that is the construction that the courts 
 have put upon the statute that you are the quasi inventor, if you 
 import it for the first time. But has it ever been said that such 
 importation of a foreign invention is negatived by a book in this 
 country stating the foreign invention ? I am not aware that it has 
 
Publication in a Booh or Specification. 247 
 
 been held to negative the right of an importer of a foreign inven- 
 tion that a book had stated it before." (2 Web. P. G. 169.) 
 
 (m) E. v. Steinbe. Scire facias. [1851] 
 
 Lord Campbell, C. J., told the jury that if the improvement for 
 which the patent was granted was contained in the specification of 
 a prior patent, or was described in a book, published abroad but 
 sold in England, the patent would be void. (40 Newton's London 
 Journal, 71.) 
 
 (w) Betts v. Menzies. Ch. [1857] 
 
 Sir W. P. Wood, V.-C, said : " I conceive that the law is, that 
 where an ingenious person makes, for instance, an improvement in 
 the glasses of a telescope, or the wheels of a carriage, for his own 
 use, and which he uses accordingly, but without publishing it 
 anywhere, or if, on the other hand, he publishes in a book his 
 invention which he has so made and used for his own private 
 accommodation, much more when he takes out a patent for it, 
 
 there can be no case for a subsequent patentee I think that 
 
 if a man sits down and takes out a patent from his own conjec- 
 tures, without ever having tried the experiment set forth in it, 
 that will not invalidate a subsequent patent taken out and prac- 
 tically worked, especially when it turns out that the method pre- 
 scribed by the earlier patent is practically useless." (3 Jur., 
 N. S. 358.) 
 
 (w) Betts v. Menzies. H. L. [1859-1862] 
 
 At the trial of an action for the infringement of a patent for " a 
 new manufacture of capsules, and of a material to be employed 
 therein, and for other purposes," the defendant contended that the 
 process which the plaintiff claimed as his invention was not new, 
 as it had been discovered by one Dobbs, and by him disclosed to 
 the world by two specifications, one of the date of 1804, and the 
 other of 1820. Campbell, C.J., in summing up to the jury, said: 
 " I ask you whether you think that a person of ordinary skill, 
 reading Dobbs's specifications, and having no other information 
 upon the subject, could at once proceed to make Betts's metal, not 
 making experiments and getting out bit by bit, but whether it is 
 stated enough to enable him at once to sit down and make Betts's 
 metal ? " The Court of Queen's Bench held, that this was not the 
 proper question to be left to the jury, for though a workman 
 might not in that way be able to make Betts's metal, still Dobbs's 
 specifications, or something done under them, might have disclosed 
 some part of that which the plaintiff claimed. Kule absolute for a 
 new trial. (8 Ell. & B. 923.) At the new trial a verdict was 
 found for the plaintiff. The defendant having obtained a rule to 
 set aside the verdict, it was held, that the plaintiff's patent was 
 invalid, as it appeared, on a comparison of Betts's and Dobbs's 
 specifications, that the former claimed that which had been already 
 described by the latter. (1 Ell. & Ell. 990 ; 28 L. J., Q. B. 361 ; 
 5 Jur., N. S. 1164.) 
 
248 NOVELTY : 
 
 On appeal to the Exchequer OhamlDer judgment affirmed ; Wil- 
 liams and Willes, JJ., however, differed from the rest of the court, 
 holding that the plaintiff's patent was good, and not invalidated by 
 Dobbs'g ; since Dobbs's patent was practically incapable of being 
 carried into effect. (1 Ml. & Ell. 1020 ; 30 L. /., Q. 5. 81 ; 6 Jur., 
 N. S. 1290.) On appeal to the House of Lords the patent was 
 held good. Blackburn, J., in the course of his judgment, said : 
 " It snems to me that, if Dobbs had made it part of the public 
 knowledge how to produce a new material, as a practical result, 
 and Betts had afterward.s claimed to have a patent for, amongst 
 other things, producing that result, he would have claimed what 
 was not new, but if Dobbs had not made it part of the public 
 knowledge how to produce a result, then Betts w^ould not have 
 claimed anything already known." Lord Chancellor Westbury, 
 after stating the facts, said : " To defeat a new patent, it must be 
 clear that the antecedent specification disclosed a practical mode of 
 producing the result which was the object and effect of the subse- 
 quent discovery. A bairen general description, therefore, though 
 containing some suggestive information, or involving some specu- 
 lative theory, could not be treated as avoiding, for want of novelty, 
 a subsequent specification or invention. Unless it was ascertained 
 that the antecedent publication involved the same amount of 
 useful information. As to the two specifications in this case, it 
 was clear that the first was a mere general suggebtion, the other a 
 specific practical invention. The one might lead to the other ; but 
 the latter alone complied with the conditions under which protec- 
 tion was given by the patent law. Here there was nothing to 
 show that Dobbs's patent was capable of a practical application ; 
 and on the principle contained in the answer of the judges, it was 
 clear that the decision of the two courts below ought to be re- 
 versed." (10 E. L. Gas. 117 ; 31 L. J., Q. S. 233 ; 9 Jur., N. S. 29 ; 
 11 W. B.l; 7 L. T. Bep., N. S. 110.) 
 
 (x) Hills v. London Gaslight Company. [1860] 
 
 The plaintiff in 1 849 obtained a patent for the employment of 
 the hydrated oxides of iron in purifying coal gas from sulphuretted 
 hydrogen. 
 
 In 1840 one Croll took out a patent, in the specification of which, 
 after speaking of the use of black oxide of magnesia for the purpose 
 of removing the sulphuretted hydrogen, he said : " The same effect 
 may be produced by the a.pplication of the oxide of zinc, and the 
 oxides of iron." The court construed this as a claim for the use of 
 the hydrated and anhj'drous oxides of iron. And, further, that as 
 there are many oxides of iron, the hydrated and anhydrous, the 
 natural and artificial, some of which will, and some will not 
 answer the purpose, it is a matter of investigation and experiment 
 to see which will. Upon this ground it was held that Croll had 
 not anticipated the plaintiff. (5 H.&N.Q12; 29 L. J., Ex. 409.) 
 
 (y) OxLET V. HOLDEN. [1860] 
 
 A provisional specification was filed on the 17th of March, and 
 
Publication in a Booh or Specification. 249 
 
 afterwards abandoned by the inventor, who delivered another 
 speoifioation for the same invention on the 10th of April, in respect 
 of which a patent was granted to him on the 12th of October, but 
 dated as of the 10th of April. It was contended, that the filing 
 by the plaintiff of the piovisional specification of the 17th of 
 March, and his afterwards allowing it to expire, was such a 
 dedication to the public as prevented his obtaining a valid patent 
 for the same invention on the subsequent application of the 10th 
 of April. This objection was overruled, and Erie, C.J., in deliver- 
 ing the judgment of the Court of Common Pleas, said : " We are 
 of opinion that a provisional specification abandoned does not 
 become public by abandonment. The statute 15 & 16 Vict. c. 83, 
 s. 29, authorizes the publication, but until that event it is not 
 public. Furthermore, although the first provisional specification 
 may afford an objection, either to receiving a second for the i-ame 
 invention, or to granting a patent for the invention after the first 
 specification has expired, there is no principle of law, and no 
 enactment making the patent void, if it is so granted; and, on 
 the contrary, sect. 24 enacts, that the patent dated as of the day 
 the provisional specification was delivered in shall be of the same 
 force and validity as if it had been sealed on that day. This 
 patent is dated as of the 10th of April ; on that day the protection 
 given under the specification of the 17th of March existed, and 
 the patent is valid by the operation of this section." (30 L. J., 
 G. P. 68; 8 Com. B. Bep., N. S., 666; 8 W. B. 626; 2 L. T. Bep., 
 N. S., 464.) 
 
 (x) Hills v. Evans. Ch. [1862] 
 
 In giving judgment in this case, lord Westburj"-, L.C., said : 
 " The antecedent statement must (in order to invalidate a subse- 
 quent patent) be such that a person of ordinary knowledge of the 
 subject would at once perceive, understand, and be able practically 
 to apply the discovery without the necessity of making further 
 experiments, and gaining further information before the invention 
 can be made useful. . . . The information as to the alleged inven- 
 tion given by the prior publication must, for the purposes of 
 practical utility, be equal to that given by the subsequent patent. 
 The invention must be shown to have been before made known. 
 Whatever, therefore, is essential to the invention must be read out 
 of the prior publication. If specific details are necessary for the 
 practical working and real utility of the alleged invention, they 
 must be found substantially in the prior publication. Apparent 
 generality, or a proposition not true to its full extent, will not 
 prejudice a subsequent statement which, is limited, accurate, and 
 gives a specific rule of practical application. The reason is mani- 
 fest, because much further information, and therefore, much further 
 discovery, are required before the real truth can be extricated and 
 embodied in a form to serve the uses of mankind. It is the differ- 
 ence between the ore, and the refined and pure metal which is 
 extracted from it." (31 L. J. Ch., 463 ; 8 Jur., N. S., 629 ; 6 L. T. 
 Hep., N. S., 93.) 
 
250 NOVELTY : 
 
 (a) Lano v. Gisboene. Ch. [1862] 
 
 An invention was described in a book pnblislied in France, 
 copies of which were sent to England, to a bookseller, for sale : — 
 .Held, that this was a publication of the invention. The Master 
 of the EoUs said : " In my opinion there are two modes by which 
 an invention may be made public. One is by such user as would 
 alone make it a part of the stock of public information, and the 
 other is by the simple fact of what in law is called ' a publication.' 
 I am of opinion that the true result of the cases is this : — that 
 the observations to be found in them as to the circumstances which 
 make an invention become a part of the stock of public information, 
 apply to those cases where somebody has used the invention, not 
 for the purpose of experiment, but for the purpose of really making 
 use of it as a complete invention. ... A publication takes place 
 when the inventor of any new discovery, either by himself or 
 by his agents, makes a written description of it, and prints it 
 in a book, and sends it to a bookseller's to bjB published in this 
 country. I am of opinion that it is not at all necessary to estab- 
 lish the fact that one volume of that book has been sold, for I 
 think that as soon as an inventor informs the public of what his 
 invention consists, and prints it in a book, which he sends to a 
 publisher to sell, from the moment that the book is exposed for 
 sale in the bookseller's shop, there becomes, in point of law, a 
 complete publication of the invention." (31 Beav. 135 ; 31 L. J., 
 Ch. 770; 8 Jnr., N. S., 736; 10 W. B. 639; 6 L. T. Bep., N. S., 
 772.) 
 
 (6) Young v. Feenie. Ch. [1864] 
 
 Inventions in mechanics are as totally different from inventions 
 in economical chemistry, as the laws and operations of mechanical 
 powers differ from the laws of chemical affinities, and the result of 
 analysis in the comparatively infant science of chemistry, with its 
 boundless field of undiscovered laws and substances. Where, 
 therefore, prior to the date of an inventor's patent, something 
 necessary for the useful application of a chemical discovery, for 
 manufacturing purposes, remained to be discovered, which the 
 plaintiff's invention supplied, held, that the manufacture, with 
 the materials and process in the specification, was a " new manu- 
 facture not in use " at the date of the patent. (4 Giff. 577; 10 Jur., 
 N. S., 926 ; 12 W. B. 901 ; 10 L. T. Sep., N. S., 861.) 
 
 (c) Betts v. Neilson. Betts v. De Vitre. Ch. [1868] 
 
 The specification of a patent may describe the process to be 
 adopted so insufficiently as to invalidate the patent, and yet 
 disclose enough to show that what is claimed by a subsequent 
 patent is not new. A prior publication will not invalidate a 
 patent, unless it has imparted information so as to enable anyone 
 working upon it to reckon with confidence on the result. (L. B., 
 3 Ch. 429 ; 37 L. J., Ch. 321 ; 18 L. T. Sep., N. S., 165.) [Con- 
 sidered in Plimpton v. Malcolmson, inf. p. 251 (/).] 
 
Puhlieation in a Booh or Specification. 251 
 
 (d) BoviLL V. CowAii. [1868] 
 
 The plaintiff's invention, which was for improvements in the 
 working of millstones, consisted in an exhaust just adequate to 
 suck away the accumulation of hot air round the stones, carrying 
 away and utilising the stive, leaving the meal to descend through 
 the spout clear, and free from clamminess, and leaving the air of 
 the mill case of the same density as the external air. This was 
 alleged to he anticipated by three French patents published pre- 
 viously by deposit in the British Museum. Cairns, L.C. (affirming 
 Eomilly, M.E.) : " It is not suggested that any person, either in 
 this country or elsewhere, was ever led by reading any of the 
 specifications of these French patents to adopt a process the same 
 as the plaintiff's, and all that (the defendant's witness) says of them 
 is that the text and drawings contain description clear and suffi- 
 cient for a millwright of ordinary skill to construct and carry into 
 effect a fit and proper means for exhausting the stive without 
 carrying away the meal and exhausting the dusty air, when the 
 same has been blown through the grinding surfaces of the mill- 
 stones, and also for passing the dust or stive through suitable 
 porous fabrics. In one sense I have no doubt this is the case. I 
 think it very probable that a skilled workman, if informed of the 
 injurious effect of an unremoved plenum round the millstones, and 
 desired to remove that plenum by an exhaust which would remove 
 it, and do nothing more, might use or adjust the machinery 
 described in these French patents in a way that would effect that 
 end ; but the real question is, do these French patents profess to 
 set forth as their discovery the removal of the plenum in this 
 sense, and do they describe a process designed and fitted on the 
 face of it to attain this end ? I am clearly of opinion they do 
 not." (2 Griff. 45, at p. 46.) 
 
 (e) Neilson v. Betts. H. L. [1871] 
 
 Per Lord Colonsay : — It is not enough that there has been, in a 
 former patent, a general disclosure of the object to be attained, 
 unless there is a specification clearly pointing out the mode of 
 attaining it. (i. B., 5H.L.2;40 L. J., Gh. 317 ; 19 W. B. 1121.) 
 
 (/) PLmPTON V. Malcolmson. M. E. [1876] 
 
 Jessel, M. E., referring to the issue of novelty, said : " The cases 
 cited may be rather used as illustrations of what will amount to 
 sufficient evidence than as deciding anything in principle, beyond 
 this, that it must be sufficiently known." (L. B., 3 Ch. D. bbl.') 
 Eeferring to Stead v. Anderson (2 Web. P. 0. 149), his lordship 
 continued : " The case goes to this, that a book must be made 
 public to such an extent as to be generally known among persons 
 practising in such matters. It is, theiefore, not merely publica- 
 tion, though, as a general rule, according to the SouseMll Coal 
 Company v. Neilson {Web. P. 0. 718, n.), when you say a book is 
 published, and noboby contests it, you assume that several copies 
 have been printed and circulated, unless somebody asserts the 
 contrary. But, as regards the law, you must go a step further. 
 Does that doctrine, therefore, apply to a case of this kind ? There 
 
252 NOVELTY : 
 
 is one copy of the book, which is all that has ever been printed 
 and published, and that copy of the book was always kept in the 
 back parlour of the bookseller's shop, and never was seen, so far 
 as the evidence went. Would that satisfy the doctrine ? Clearly 
 not." (lb. 668.) " If it were shown that no copy had ever got 
 into the hands of the public, and the public knew no more about 
 it than seeing the back of the book in the bookseller's window, 
 and every- copy could be accounted for, and that none had been 
 sold though exposed for sale, that would not be a suf&cient publi- 
 cation to avoid a subsequent patent." (J&. 562.) 
 
 " What is required as regards prior description ? I should have 
 thought, independently of authority, that no prior description 
 ought to invalidate a patent, unless you could make the thing 
 from the description. I mean, unless a person of ordinary skill in 
 the trade could make it from the description. But it has been 
 alleged that something less will do. As I read the authorities, 
 that is not so. The question has been before the House of Lords 
 in the case of Neilson v. Betts (L. B., 5 H. L. 1.) The judgment 
 of Lord Westbury and Lord Oolonsay comes to this — that the des- 
 cription in the book must be equivalent to a specification. I may 
 say that this is entirely in accordance with the case of Hill v. Evans 
 (4 B. F. & J. 300), and the case of Betts v. Menzies (10 H. L. Gas. 
 117) ; and, even if I differed from them, which I do not, I should 
 be bound by those decisions. On the other hand, there is a 
 decision of Betts v. Neilson (L. B., 3 Oh. 431), which says that less 
 will do ; that the principle having been disclosed, although a 
 workman could not make the machine (that is, the substance of 
 it), that would be sufficient to avoid the patent. All I can say is, 
 that I do not think that is fair to a patentee, and I should not 
 have so decided had the matter been res integra ; but it is hot res 
 Integra, and I have no right to depart from what has been laid 
 down by the House of Lords and the Court of Appeal in the three 
 other cases." (16. 567.) His lordship also held, that such prior 
 description, like a specification, must be intelligible to an " ordinary 
 workman, using that amount of skill and intelligence which is 
 fairly to be expected from him." (lb. 569.) 
 
 (g) Stoner v. Todd. M. E. [1876] 
 
 Where a provisional specification contains an imperfect descrip- 
 tion of an invention, part of which was omitted in the final 
 specification : — Held, that there was no prior publication of the 
 part omitted so as to vitiate a subsequent patent for a similar 
 invention on the ground of want of novelty. (L. B., 4 CJh. D. 58.) 
 
 Jessel, M.K. : " When we find in the final specification that, in 
 the description of one of the subordinate matters of the invention, 
 one of the details has been abandoned, that is a notification to the 
 public that the inventor could not work it, or thought it useless, 
 and has consequently omitted it altogether. Therefore I do not 
 consider that the insertion of a sketch in this provisional specifica- 
 tion gives such information to the world as to amount to publica- 
 tion. At the same time I exclude from consideration those cases 
 
Publication in a Book or Specification. 253 
 
 in which the provisional specification contains as complete a des- 
 cription of the invention as the final specification, and I confine 
 my remarks to those cases in which there is a mere sketch. I am 
 not one of those who think that inventors are to he deprived of the 
 fruits of their labours hy previous sketches of inventions by others. 
 There are very few inventions that have not been in some way 
 anticipated or preceded by some notion or trial that has not been 
 successfully prosecuted. This may be illustrated by the invention 
 of the steam-engine, and by the discovery of the circulation of the 
 blood. There is nothing that is entirely novel. Therefore the 
 Court should be slow to listen to those who say that the same 
 invention has been published before in a sketch like this which 
 is more or less perfect." {lb. 60.) 
 
 (h) Plimpton v. Spiller. C. A. [1877] 
 
 On the 25th August:, 1865, a patent for improvement in the 
 construction of skates was granted to the agent of the inventor, who 
 was a resident in America, and to whom the patent was afterwards 
 assigned. Two years previously an American book, containing a 
 brief description of the invention (but not sufficiently particular 
 to enable persons to manufacture the skates), and five weeks pre- 
 viously an American book of illustrations, containing a drawing of 
 the invention, were sent to the library of the Patent Office in 
 London. This book of illustrations was not entered in the book of 
 donations or in the catalogue, but it was placed on a bookshelf in 
 a room open to the public, and was seen there by a librarian 
 before the plaintiff's patent was taken out : — Held (affirming the 
 decision of the Master of the EoUs), that there was no prior publi- 
 cation of the invention in this country. (L. B., 6 Ch. D. 412.) 
 
 James, L.J., in delivering judgment, said : " As a matter of 
 fact, it is impossible to say that this American book ever was in 
 the library in any sense in which it could be construed to be 
 accessible to the public, or that portion of the public which con- 
 sists of persons conversant with this particular subject 
 
 That being so, it is not necessary to go further, but I should, if it 
 were necessary, desire much further time to consider whether, 
 even if it were proved that the book, one copy of which had been 
 sent over as a present from a gentleman in America, was on the 
 shelf in the library between the 20th July and the 25th August, 
 that would be a sufficient publication, and would be such an 
 addition to the stock of common knowledge in this country as 
 would have prevented a man from being the first and true 
 inventor of this patent ; such an addition to the stock of common 
 knowledge as a man was not entitled (to use the language of one 
 of the cases) to deprive the public of." (lb. 429.) 
 
 Brett, L.J., in delivering judgment, said: "The real question 
 to be decided by the Court with regard to this matter is whether 
 the invention was before the patent in question known to the 
 public in the sense that the Master of the Eolls has described, i.e., 
 not known to all the public, but known; to a sufficient number, so 
 
254 NOVELTY : 
 
 that you may properly say it was inown in England. In order 
 to prove or disprove tbat fundamental proposition, you may show 
 by way of evidence that there has been a prior invention, and that 
 it has become as a fact, although it has never been written, 
 known to the people in the trade. That is what Baron Parke 
 says, in Stead v. Anderson (2 Web. P. C. 148), that it has become 
 generally known in the sense that it has become known to the 
 people in the trade. That is only one form of evidence which 
 may be given in proof of the fundamental proposition. Another 
 mode of proving the fundamental proposition is to show that a 
 description of the invention has been published. But then, to 
 show that, it is not sufficient merely to show that it has been pub- 
 lished in one sheet or book. As Baron Parke himself says : ' Pub- 
 lished means offered or dedicated to the public' He then goes on 
 to say that the question with regard to that is, was the invention 
 published or offered to the public to such an extent as that it was 
 generally known among engineers or persons interested in the 
 matter ? The mere fact of its being dedicated, the mere fact of 
 its being published, is not sufficient, it must be so far published 
 as that you may fairly say it is known to a sufficient number of 
 the public." (lb. 434.) 
 
 (i) Patterson v. The Gas Light and Coke Company. H. L. [1877] 
 
 The plaintiff, one of the three gas referees appointed by the 
 Board of Trade, under the City of London Gas Act, 1868, obtained 
 a patent, while acting as such referee for " improvements in the 
 purification of coal gas," and subsequently filed a bill against the 
 defendants to restrain them fiom infringing the same. The appli- 
 cation for the patent was dated the 9th of March, 1872, and the 
 first publication of the invention was in an official report published 
 by all the referees jointly, which bore date January 31, 1872, but 
 was kept back from the official authorities, the Board of Trade, 
 until the 26th of March following, and was generally circulated a 
 few days after. The gas referees were required by the above Act 
 of Parliament to prescribe and certify the maximum amount of 
 impurity in each form with which gas supplied by a company shall 
 be allowed to be charged ; and the referees had, in accordance 
 with their duty as prescribed by the Act of Parliament, included 
 in their report instructions and suggestions for the guidance of 
 gas companies. Held (affirming the Court of Appeal), that the 
 whole of what was contained in the report was public property, 
 before the report was sent in to the Board of Trade, and conse- 
 quently, that from the time when the report was framed, i.e., the 
 31st of January, 1872, at least, there was no consideration for the 
 patent, as the subject of it had ceased to be a new manufacture 
 before the date of the patent, (i. B., 3 App. Cas. 239.) 
 
 Lord Blackburn : " The consideration tor a patent is the com- 
 munication to the public of a process that is new. Li Sindmarch 
 on Patents, it is laid down that ' if the public once become pos- 
 sessed of an invention, by any means whatever, no subsequent 
 
PMication in a Booh or Specification. 255 
 
 patent for it can be granted, either to the true or first inventor 
 himself, or any other person, for the public cannot be deprived of 
 the right to use the invention, and a patentee of the invention 
 could not give any consideration to the public for the grant, the 
 public already possessing everything that he could give.' This 
 is, in my opinion, a correct statement of the law. 
 
 " It is not necessary that the invention should be used by the 
 public as well as known to the public. If the invention and the 
 mode in which it can be used has been made known to the public 
 by a description in a work which has been publicly circulated 
 (Stead V. Williams, 7 M. d; G. 818, 842), or in a specification duly 
 enrolled (Bush v. Fox, 5 H. L. Gas. 707 ; Betts v. Menzies, 10 H. L. 
 Cos. 117), it avoids the patent, though it is not shown that it ever 
 was actually put in use. It is true that the la'ter case establishes 
 that ' an antecedent speciiicatiou ought not to be held to be an 
 anticipation of a subsequent discovery, unless you have ascertained 
 that the antecedent specification discloses a practical mode of pro- 
 ducing the result which is the efiect of the subsequent discovery.' 
 (Per Lord Westbury, C, 10 B. L. Gas. 154.) But all difficulty on 
 that score is, in this case, removed by the statement in the 37th 
 paragraph of the bill of complaint already cited. If the date of 
 the patent had been after the circulation of the report amongst 
 the gas companies, instead of being, as it was, a few weeks earlier, 
 the case would, it seems to me, have been quite unarguable. The 
 date of the patent was, however, before the contents of the report 
 were known to the gas companies, though several weeks after they 
 were known to the whole of the referees and their secretary ; and, 
 as I have already pointed out, from the moment the referees 
 became aware of what was in the report, it became the property of 
 the public, and they were bound to make it known. The appellant, 
 indeed, contends that he made it known to the referees only con- 
 fidentially. I do not pause to inquire whether this was the fact 
 or not, for I think it immaterial. I do not mean to throw any 
 doubt on the doctrine in Morgan v. Seaward (2 M. & W. 544), that 
 a disclosure to assistants or partners of an invention whilst it is 
 being perfected, under an obligation to keep it secret till the 
 patent is taken out, is not a disclosure to the public, for such 
 persons could not make the invention known without a breach of 
 duty. But, in the present case, the disclosure was to paid public 
 officers, who could not keep it secret without a breach of duty. 
 They were bound to make it known, and even if they, in breach 
 of their duty, kept it back, the invention was not the less the 
 property of the public from the time the referees knew it, which 
 was at least as early as the date of the report." (16. 244.) 
 
 (j) Bailey v. Eoberton. H. L. [1878] 
 
 A patent for " improvements in preserving animal substances," 
 in which the invention consists in preserving fresh meat by 
 dipping it into a solution of bisulphite of lime, is anticipated by a 
 prior patent for " improvements in preserving organic substances," 
 in which the invention consists in preserving meat already par- 
 
256 NOVELTY : 
 
 tially preserved, either by salting, drying or smoking, or the like,' 
 by dipping it into a like solution. 
 
 Lord Blackburn : " Could it be said, you have dipped a ham into 
 bisulphite of lime, and so stopped the putrefaction ; but I say you 
 shall not dip a leg of fresh pork . into it. I think you cannot do 
 better than take the old illustration. The old illustration was, 
 you cannot take out a patent, saying : You have eaten soup with 
 a spoon, I will take out a patent for eating pea soup with a spoon. 
 You have taken out a patent for sweeping an old carpet with a 
 new broom, I will take out a patent for sweeping a new carpet 
 with an old broom. I quite agree there may be cases in which 
 there is real invention and discovery, though an apparent applica- 
 tion of an old principle ; the best case for illustration is one in 
 which, I believe, the patent was granted, but the invention was not 
 found practicable. About thirty years ago an ingenious man, seeing 
 the plastic nature of the dough of tlour, and knowing that the 
 Neapolitans spin all kinds of macaroni out of it very ingeniously, 
 came to the conclusion that if he could only manage to take red 
 hot iron almost melting he, by an analogous process, could spin 
 gas pipes, but the principle failed in practice ; as might be sup- 
 posed, it was rather a difficult thing to do. Nobody would have 
 doubted, if he had succeeded in it, that it would have been a very 
 great invention. But there is no such invention here ; it is merely 
 saying the exact mode in which E. has been preserving his semi- 
 cured meat is to be prohibited to him when it is applied to meat 
 which is not cured at all. I must say it strikes me that would 
 not be a good patent at all." (L. B., 3 Aj)p. Gas. 1079.) 
 
 (Je) United Telephone Compaist v. Harbison, Cox, Walker, axd 
 Company. [1882] 
 
 An instrument which was alleged to be an anticipation of an 
 invention patented in 1876, for improvements in electric telephony 
 and telephonic apparatus was described with plates in a paper 
 written in German in a scientific journal called the ' Zeitschrift ' 
 of the German- Austrian Telegraph Union, published in 1862, in 
 Berlin. A copy of the ' Zeitschrift ' was in the library of the 
 Patent Office in London, and another copy was in the library of 
 the Institute of Civil Engineers, where it was accessible to all the 
 members, more than 3000 in number, and to friends introduced by 
 them. It was, however, entered in the catalogue only under the 
 head of Journals, not under the head of Telephones or Telegraphs. 
 A telegraphic engineer gave evidence that before the date of the 
 patent he had seen the description in the ' Zeitschrift,' and that 
 though he could not read German, he was able from his knowledge 
 of the technical words used, with the assistance of the plates, to 
 understand the substance of the invention. Held, that there was 
 evidence from which it ought to be inferred that the description in 
 the journal must be considered to have been within the knowledge 
 of persons skilled in such matters in this country. But held, on 
 the facts, that the description was not an anticipation of the 
 patented invention. (21 Ch. D. 720.) 
 
Publication in a Book or Specification. 257 
 
 (I) Davis v. Feldman. C. A. [1884] , 
 
 Another way of stating the question whether a specification is 
 an anticipation of a particular invention in a material part, is to 
 try the question : " Would the patentee by using his patented 
 invention he infringing the patent which did or would have 
 resulted from the completion of the prior specification?" (Griff. 75 ; 
 1 O. B. 193.) 
 (m) Philpott v. Hanbuey. [1884-5] 
 
 Grove, J. : " My opinion is that there is not the same neces- 
 sity for accurate description of how an invention shall be carried 
 into effect for the purpose of anticipating an invention, as there 
 is for the purpose of sustaining a patent in the hands of a 
 patentee, because in the latter case a description ought to be 
 given which ought not to merely inform the minds of every 
 skilled person or scientific person in the trade, but should inform 
 the minds of ordinary persons who are accustomed to work at the 
 trade. Therefore I think that there is a distinction, but I am 
 willing to rest my definition or description of what anticipates a 
 patent on this, that there must be a publication, which, when read 
 by persons versed in the trade, skilful and well acquainted with 
 the trade (I might even limit it perhaps to those in the trade 
 who are most skilled, the higher class of skilled workmen), would 
 enable them to understand it. If it be such it anticipates the 
 patent. If it is a mere suggestion, if it is so erroneous in the 
 description that they cannot by reasonable application of the mind 
 find out what it means, it does not anticipate the patent." (Griff. 
 185; 2 0. -B. 33, at p. 48.) 
 
 (k) Jensen v. Smith. [1885] 
 
 It was alleged that the plaintiff's patent for improvements in 
 lubricators, wherein the lubricant was forced through a pipe by 
 a screw actuated by a cap, had been anticipated by a lubricator 
 having a top through which a screw passed, and a piston inside 
 actuated by the screw : — Held, that assuming that the plaintiff's 
 patent had been valid the alleged anticipation would have been 
 an infringement of it, and that, therefore, there was not sufficient 
 invention in it. (Gi-iff. 136 ; 2 0. B. 249.) 
 
 (o) Poolet v. Pointon. [1885] 
 
 The specification which was alleged to be an anticipation was 
 so clogged with siiperfluous apparatus that the patented process 
 never obtained currency in England. Pearson, J. : " It maj' be 
 said that inasmuch as his apparatus was so costly and so cumber- 
 some that it prevented the use of his process, that he had 
 described no \v ay by which that process could be effectually used, 
 and that accordingly his patent must be considered as a dead letter, 
 and did not stand in the way of any person who should take 
 out a patent for a similar principle shown in the process easy and 
 without cost." But whether this was so or not the judge held 
 that the plaintiff in his patent had not got any further than the 
 prior specification, and that, therefore, the patent was bad. {Griff. 
 199; 2 O.B. 167, at p. 171.) 
 
 s 
 
258 NOVELTY : 
 
 (p) Lawrence v. Perry. [1885] 
 
 A patent for improvements in lead and crayon holders was 
 alleged to have been anticipated by various specifications, one of 
 which was only provisional. North, J. : "I have felt some diflS.- 
 CTilty in seeing how the plaintiff's invention can be tiseful if it 
 only differs from an earlier one by an ingredient which does 
 neither harm nor good." (2 0. JR., p. 184.) It was alleged " that 
 no case has occurred yet in which the description contained in a 
 provisional specification has been held sufficiently precise to 
 destroy a later patent for a like subject. Be this as it may there 
 is nothing in that remark relevant to the present case. ... In 
 this case I am clearly of opinion that Wiley's provisional specifica- 
 tion does contain quite a sufficient description of the nature of the 
 invention, and also of the manner in which it is to be performed 
 to bring the case within the ruling of Lord Westbuiy in Rills v^ 
 Evans. I find a clear description how to construct an instrument 
 which is completely covered by the first claiming clause of the 
 plaintiff's ; and this is, in my opinion, quite sufficient to prevent 
 there being subsequent first and true inventors within the realm 
 of the instrument so described even if the description in the 
 provisional specification of other alternative forms of instrument 
 were mere sketches only." (Griff. 143; 2 0. B. 180, at p. 187.) 
 
 (3) Otto v. Steel. C. A. [1886] 
 
 A French treatise was placed in the British Museum in 1863. 
 The Museum Catalogue is kept with reference to author's names ; 
 books are arranged according to subject matter ; readers can under 
 guidance search for books on particular subjects : — Held, that there 
 was no prior publication in England of matter contained in the 
 treatise so as to avoid a patent taken out in 1876. (31 Gh. B. 241 ; 
 56 L. J. C%. 196 ; 54 L. T. Bep., N. 8. 157 ; 34 W. B. 289; 3 0. B. 
 109.) 
 
 (r) Lister v. Noeton. [1886] 
 
 The defendant in an action for infringement alleged want of 
 novelty on the ground that the patentee had filed a provisional 
 specification on the 24th July, 1880, the provisional specification 
 of the completed patent being filed on the 21st January, 1881, and 
 had so used and published the invention between these dates as 
 to distinguish this case from Oxley v. Solden, and to invalidate the 
 patent: — Held, that there was evidence of user during this period, 
 but that this user in public was covered by the grounds on which 
 Oxley v. Holden was decided, and was protected by the first pro- 
 visional specification. {Oriff. 148 ; 3 0. iJ. 199.) 
 
 (i) Fletcher v. Aeden. [1887] 
 
 The plaintiffs patent was for an improved gas-cooking appa- 
 ratus : — Held, that it had been anticipated by an apparatus from 
 which it differed only in the substitution of a hinge or a pivot 
 for a slide as a means of attaching certain deflector plates. 
 (5 0. B. 46.) 
 
Publication in a Book or Specification. 259- 
 
 (i) MosELEY e. The Victoria Eubber Company. [1887] 
 
 Chitty, J. (following Hills v. Evans) : " The information as to 
 the alleged invention given by the prior publication must, for 
 the purposes of practical utilitv, be equal to that given by the 
 subsequent patent." (4 0. B. 252.) The defendants relied on four 
 specifications covering a period of fourteen years, and the latest 
 nearly twenty years before the plaintiff's patent. No one had pro- 
 duced from them an article such as that produced by the plaintiff's 
 process : — Seld, no anticipation. (4 0. B. 241.) 
 
 (m) Harris v. Eo^hwell. C. A. [1887] 
 
 In December, 1878, and February, 1880, specifications in 
 German with drawings of two patents were deposited in the free 
 library at the Patent Office, and the Commissioners' Journal, 
 amongst the list of patents granted in Germany, contained entries 
 of these patents with notes that the specifications might be con- 
 sulted in the library of the office. In April, 1880, a patent was 
 obtained for a similar invention : — Seld, that there was evidence 
 from which to infer prior publication in this country, and that 
 this inference was not affected by the prior specifications being 
 in German. Lindley, L. J. : " Prima facie a patentee is not. the 
 first inventor of his patented invention if it be proved that before 
 the date of his patent an intelligible description of his invention, 
 either in English or in any other language commonly known in 
 this country, was known to exist in this country either in the 
 Patent Office or in any other library to which the public are 
 admitterJ, and to which persons in search of information on the 
 subject to which the patent relates would naturally go for infor- 
 mation. But if, as in Plimpton v. Malcolmson, Plimpton v. Spiller, 
 and Otto v. Steel, it be proved that the foreign publication, 
 although in a public library, was not in fact known to be there, 
 the unknown existence of the publication is not fatal to the 
 patent." (36 Gh. D. 416, at p. 431 ; 66 L. J. Gh. 459 ; 56 L. T. 552 ; 
 35 W. B. 581 ; 3 T. L. B. 563.) 
 
 (v) Ehrlich v. Ihlee. C. A. 11888] 
 
 Where the only anticipation alleged is by description in A 
 specification or otherwise, it must be such as would enable any 
 competent person to make from it the machine for which pro- 
 tection is claimed. (5 0. B. 437.) 
 
 (m) Kaye v. Chubb. H. L. [1888] 
 
 Semble : A worthless and abandoned patent may be an anticipa- 
 tion of a subsequent invention if it describe such invention in 
 terms which fully and sufficiently disclose it and the manner in 
 which it is to be praotised. (5 0. B. 641.) 
 
 (a;) Herburger Schwander ET CiE. «. Squire. C. A. [1889] 
 
 An invention which was merely the adjustment in a beneficial 
 manner of the distance between two of the working parts of a known 
 machine : — Held, to be anticipated by a drawing in a previous 
 
 s 2 
 
260 NOVELTY : 
 
 specification -wliioh showed the same position of the parts, though 
 the.SJihject of that invention was the substitution of metal for wood. 
 (5 0. it. 393.) Bsher, M.E. : " I should say that if a person has 
 drawn a picture of a machine without describing it at all and 
 published that picture in a book, and that picture was one which any 
 machinest would understand and could make a machine from that 
 picture alone, although the man had not claimed the thing by a 
 patent or as subject matter of a patent, if he had published it so as 
 to be generally known, then a person cannot take out a patent 
 in respect of a machine made substantially like that, which would 
 be an infringement of it if it had been patented." (6 0. B. 194.) 
 
 (2/) Thomson v. Batty. [1889] 
 
 In the plaintiffs patent the third claim was for the employment 
 in compasses of a large bowl filled or partially filled with a 
 viscous fluid, and the fluid operated to retard the vibrations of 
 the bowl in which it rested, which operated to steady the compass 
 bowl. In the alleged anticipation the viscous fluid was directly 
 in contact with the compass bowl and prevented its shifting its 
 place : — Held, that as in the plaintiff's patent the fluid steadied 
 the compass bowl not by pressing against it, but by friction 
 against the vessel in which it was itself contained, there was no 
 anticipation. (6 0. B. 84.) 
 
 (z) WiNBY V. Manchestek Steam Tramways. [1889] 
 
 " Where the only anticipation alleged is by description in a 
 .speciflcation or otherwise, it must be such as would enable any 
 competent person to make from it the machine for which pro- 
 tection is claimed : " — Seld, that there was no anticipation where 
 the patent was for improvements in points for tramways where 
 the tongue was actuated vertically instead of horizontally by a 
 spring, and was automatic ; and the alleged anticipation was for 
 improvements in points in railways, and the tongue was worked 
 vertically instead of horizontally, but was held by blocks while 
 the train passed over it. (6 0. B. 359.) Sent down by the 
 Court of Appeal for a new trial on question of infringement. 
 
 (7 o.B.sa.) 
 
 (a) King, Beown and Company v. Anglo-American Brush Coe- 
 
 PORATION. [1889] 
 The plaintiffs, whose customers had been repeatedly threatened 
 by the defendants with proceedings in respect of compound wound 
 dynamo machines, alleged to be infringements, commenced an 
 action to have the defendants' patent declared void on grounds of 
 variance, want of novelty, and improper amendment. The de- 
 fendants' patent claimed practically (1) the form of commutator 
 described (as to which the court held that there was a fatal vari- 
 ance between the specifications) ; and (2), the series-shunt machine, 
 which the defendants alleged had been patented, and used by 
 Varley. Held, that Varley's patent did sufficiently describe a 
 series-shunt machine to enable a workman to make one. Lord 
 
Publication hy Experiment. 261 
 
 Trayner : " But even assuming the fact to be that from Varley's de^ 
 scriptiou alone the ordinary skilled workman could not have con- 
 structed a series-shunt machine, that is by no means conclusive. 
 A specification may so insufiioiently describe the process or the 
 machine patented as to render the patent invalid. It may, never- 
 theless, contain sufiicient description to disclose or publish the 
 invention so as to prevent its being validly patented by another 
 subsequentlj'." 
 
 Held, further, that a machine constructed under Varley's patent 
 was in fact a series-shunt machine, and that as it was used to 
 illustrate certain operations in a diving;-tank before the public, 
 this was a sufficient publication. (6 0. B. 414.) 
 
 (6) American Braided Wire Company v. Thomson. H. L. [1889] 
 
 A patent, which consisted substantially in the application of 
 tubular sections of braided hard wire to bustles, was alleged to be 
 anticipated by a specification which described certain applications 
 of bra,ided wire to satchels, handles, and other articles, and men- 
 tioned that the material might be applied to bustles ; and by 
 another specification, for the application of braided hard wire to 
 cushions — but there had not been any use of braided hard wire 
 within the realm. Held, that this invention was not anticipated. 
 (5 0. B. 113 ; 6 O.B. 518.) 
 
 (c) Deutsche Nahmasohinen Fabrik v. Pfaff. C. A. [1889] 
 
 The plaintiff's patent was for an improvement in sewing-machine 
 shuttles, and consisted in the interposition of springs between the 
 point and heel of the shuttle and the driver in order to avoid 
 noise, and moderate the tension of the thread. In the sewing 
 machine, which was alleged to be an anticipation, there was one 
 spring only, viz., at the heel. Held, that there was not sufficient 
 invention in the improvement to support the plaintiffs patent. 
 (7 0. B. 16.) Affirmed by the. Court of Appeal, after hearing the 
 defendant's evidence, on the ground that the patentee had only 
 varied the strength of a spring in a well-known machine: 
 (7 0. B. 251.) 
 
 (c *) Cheetham v. Oldham and Fogg. [1890] 
 
 The plaintiff's patent was for improvements in the manufacture 
 of felt hats : — Held, that it was anticipated by a patent which had 
 attained a similar object, namely the utilisation of the fur dust. 
 (7 0. B. 116.) 
 
 Publication by Exjieriment. 
 
 Cd) Bramah v. Hardcastle. N. P. [1789] 
 
 The plaintiff had made two or three of his patent machines 
 before the date of his patent, but it was admitted that that circum- 
 stance would not of itself avoid the grant. (Holroyd, 81 ; 1 Web. 
 P. C. 44, n.) 
 
262 NOVELTY : 
 
 (e) Jones v. Pearce. N. P. [1832] 
 
 The plaintiff obtained a patent, dated 1826, for " an improved 
 jnethod of making carriage wheels." The defendant proved that 
 Mr. Strutt, in 1814, had wheels constructed upon the same prin- 
 ciple as the patent, but differing from it in the details of construc- 
 tion. These wheels were used on a cart for a year, but subse- 
 quently getting out of order were laid aside. Patterson, J., 
 referring to the novelty of the invention, said to the jury : "It is 
 not necessary to show that it was actually in use at the moment 
 of taking out the patent. The circumstance of ceasing to use it 
 would not make it new. The question is, was there really an 
 invention by Mr. Strutt in use, known to others ? If you should 
 think his was an abortive attempt, and a failure, or a mere experi- 
 ment which did not answer, then it would not invalidate the 
 plaintiff's patent." (1 Carp. P. G. 529.) . . . " It is for you to 
 say, if on the whole of this evidence, either on the one side or 
 the other, it appeared this wheel constructed by Mr. Strutt's order 
 in 1814, was a wheel on the same principles, and in substance 
 the same wheel as the other for which the plaintiff has taken 
 out his patent, and that was used openly in public, so that every- 
 body might see it, and had continued to use the same thing up to 
 the time of taking out the patent, undoubtedly then that would 
 be a ground to say that the plaintiffs invention is not new, 
 and if it is not new, of course his patent is bad, and he cannot 
 recover in this action ; but if, on the other hand, you are of opinion 
 that Mr. Strutt's was an experiment, and that he found it did not 
 answer, and ceased to use it altogether, and abandoned it as use- 
 less, and nobody else followed it up, and that the plaintiff's inven- 
 tion, which came afterwards, was his own invention, and remedied 
 the defects, if I may so say, although he knew nothing of 
 Mr. Strutt's wheel, he remedied the defects of Mr. Strutt's wheel, 
 then there is no reason for saying the plaintiff's patent is not 
 good." (16. 530 ; 1 Web. P. G. 122.) 
 
 (/) Galloway v. Bleaden. N. P. [1839] 
 
 Tindal, C. J., thus laid down the law with regard to the novelty 
 of an invention : " A mere experiment, or a mere course of experi- 
 ments, for the purpose of producing a result which is not brought 
 to its completion, but begins and ends in uncertain experiments, 
 that is not such an invention as should prevent another person, 
 who is more successful, or pursues with greater industry the chain 
 in the line that has been laid out for him by the preceding inventor, 
 from availing himself of it, and having the benefit of it." (1 Web. 
 P. G. 525.) 
 
 (fif) Gibson v. Brand. N. P. [1841] 
 
 Tindal, C.J. : " It would not be sufiScient to destroy the patent 
 to show, that learned persons in their studies had foreseen, or had 
 found out this discovery, that is afterwards made public, or that a 
 man in his private warehouse had by various experiments endea- 
 
Publication by Experiment. 263 
 
 voured to discover it and failed, and had given it up." (1 Weh, 
 P. a 628.) 
 
 (h) The Househill CoMPAny v. Neilson. H. L. [1843] 
 
 . Trials of an incomplete invention, by way of experiment, are not 
 evidence of a prior use for the purpose of invalidating a patent. 
 (9 0. & F. 788; 1 Web. P. G. 673.) 
 
 (i) Be Newall and Elliot. [1858] 
 
 A necessary and unavoidable disclosure of an invention to others, 
 if made in the course of mere experiments, is not such a publica- 
 tion as will avoid the subsequent grant of a patent, though the 
 same disclosure, if made in the course of a profitable use of an in- 
 vention previously ascertained to he useful, would be a publication ; 
 but an experiment performed in the presence of others, which not 
 only turns out to be successful, but actually beneficial in the par- 
 ticular instance, is not necessarily a publication, so as to constitute 
 a gift of the invention to the world. (4 G. B., N. S. 269 ; 4 Jur., 
 K S. 662 ; 27 L. J., G. P. 337.) 
 
 (j) Hills v. The London G-aslight Company. [1860] 
 
 Action for the infringement of a patent, obtained in 1849, for 
 the purification of coal gas by means of hydrated oxides of iron. In 
 1840, 0. had obtained a patent for the purification of gas, and 
 claimed the use of all oxides of iron for that purpose. It was 
 proved at the trial that the hydrated oxides alone would answer the 
 purpose. In working for the purpose of completing the specifica- 
 tion of his patent, 0. had used oxides of iron for the purification of 
 gas, and the gas purified by him to the extent of 20,000 feet a day, 
 had for many days been mixed with the ordinary gas, and supplied 
 to the public from the mains of a gas company. He had renovated 
 the material by exposing it to heat on the top of some retort beds. 
 The oxides were originally in a hydrated state, and the heat used 
 by him while so working was not sufiScient to render them anhy- 
 drous; but, not knowing the difference between hydrated and an- 
 hydrous oxides, and supposing that a better result would thereby 
 be obtained, he directed in his specification that the material 
 should be raised to a red heat, which would render the oxides 
 anhydrous. The jury having found that what 0. did was in the 
 nature of an experiment, and was not a publication to the world, 
 the Court held that it did not invalidate the plaintiff's patent. 
 Bramwell, B., in delivering the judgment of the Court, said : " The 
 word ' experiment ' in the cases referred to has been used, not as 
 the sole test upon a matter of this sort, but it has been used as 
 indicating a class of practice. There is no particular virtue in the 
 word ' experiment,' and it has been used for the purpose of showing 
 that, if there has not been a user of an invention of a substantial 
 character, but rather of an experimental character, or of a character 
 analogous to an experiment, why then, although the thing has 
 been done before, it does not preclude a person from taking out a 
 patent for it ; so that although what Groll did may not have been 
 
264 NOVELTY : 
 
 strictly in the nature of an experiment, being something more, — it 
 may or may not have been so, — still the jury have so found it, and 
 we cannot grant a new trial." (5 E. & N. 312 ; 29 L. J., Exch. 409.) 
 
 (k) BoviLL V. GooDiEE N. P. [1866-71] 
 
 Byles, J. : " There may have been a great many experiments in 
 many cases before the real thing was found out ; nay, sometimes 
 what turns out to be the real thing has often been used, but only 
 by way of experiment, and then given up. That is not an an- 
 ticipation of a patent. A man must have brought his invention, 
 or his invention of a combination, to a successful issue, so that the 
 thing can be done, and it must be done, not as a mere experi- 
 ment. ... If he had a machine which did do the thing, and he 
 did not do it, and knew nothing about it, this being a patent for a 
 process, that is not an anticipation." In this case, the patent 
 being for an improved method of working millstones, by which 
 the exhaust was made just sufficient to suck away the accumulated 
 hot air, a witness stated, that he had seen machinery before the 
 date of the patent, which could be worked so as to exhaust the hot 
 air, and no more. Byles, J., said : " Of course, it can be ; because, 
 if a man has a powerful exhaust, he can exhaust to a very small 
 degree so as to produce less effect, or to a larger degree, to go up 
 to the plenum and go beyond it and suck up the stive to the meal 
 spout. He may do all that, but the question here is did they 
 invent, or even know of that precise point at which you are to 
 stop ? . . . This is a patent for a process, and as if there be a patent 
 for a medicine composed of several ingredients, and one of them 
 is very hurtful in one dose and very beneficial in another, the 
 amount of the dose is the very essence of the invention, so here 
 the quantity of air you suck up is the essence of the invention." 
 (2 Griff. 47, at p. 48 ; Sovill's Pat, p. 186.) 
 
 (I) Saxby v. Gloucester Waggon Company. H. L. [1883] 
 
 The ii'.vention, which was the subject of the plaintiff's patent, 
 related to railway signalling. Prior to the date of the patent, 
 Edwards, who had been in the plaintiff's service, was employed by 
 the L. & N. W. E. in the manufacture of signalling apparatus, and, 
 in the course of his employment, caused drawings to be made of 
 the invention by his own clerks, and those of the railway company. 
 From these drawings a working machine was made, for use in a 
 siding, but was not, in fact, used, and the drawings were submitted 
 to the locomotive committee, but were not approved : — Held, that, 
 as this was done, not with a view of taking out a patent, but with 
 a view to working the invention, there was a publication; and that, 
 as the invention belonged to Edwards, and not to the company, it 
 was immaterial that the servants of the company to whom the 
 disclosure was made were bound to secrecy. (2 Griff. 54 ; Good. 
 
 P. a 417.) 
 
 (m) Useful Patents Company v. Eylands. [1885] 
 
 Before the provisional specification was filed, the intending 
 patentee sent a tool for cutting grooves in bottles, substantially 
 
Publication hy Sale. 265 
 
 fhe same as the alleged infringement, to the defendant Kylands. 
 In fact, the patentee intended that Eylands alone should use it, and 
 should keep it secret. Eylands had two other similar tools made 
 by permission of the patentee, and turned out, at least, 600 dozen 
 hottles as samples : — Held, that this was all experimental, and that 
 there was no publication. {Griff. 234; 2 0. B. 255.) 
 
 («) WiNBY V. Manchester Steam Tramways. [1889] 
 
 A model of an invention for improved points, similar to that 
 patented by the plaintiff, had been made a year before the patent, 
 by manufacturers at Stoke-upon-Trent, for a Mr. Ayton, and had 
 been left for some time in the sheds of the North Staffordshire 
 Tramways Company. Later, it got into the possession of the 
 City Contract Corporation, who sent it to the defendants' solicitors. 
 No points had ever been made from the model : — Held, that this wa? 
 only experimental, and not publication. (6 0. B. 359.) Ordered, 
 to go down for a new trial on the question of infringement. 
 (7 0. B. 30.) 
 
 Publication hy Sale. 
 
 (o) Wood v. Zimmee. N. P. [1815] 
 
 Gibba, C.J. : " The public sale of that, which is afterwards made 
 the subject of a patent, though sold by the inventor only, made the 
 patent void." (1 Eolt, N. P. C. 60 ; 1 Web. P. C.4:i; 1 Carp. P. C. 
 294.) 
 
 (j)) Morgan v. Seaward. [1837] 
 
 Parke, B., said : " It must be admitted, that if the patentee 
 himself had, before his patent, constructed machines for sale as an 
 article of commerce for gain to himself, and been in the practice of 
 selling them publicly, that is, to any one of the public who would 
 buy, the invention would not be new at the date of the patent. 
 This was laid down in the case of Wood v. Zimmer, and appears to 
 be founded on reason. For if the inventor could sell his invention, 
 keeping the secret to himself, and when it was likely to be dis- 
 covered by another take out a patent, he might have practically a 
 monopoly for a much longer period than fourteen years. Nor are 
 we prepared to say, that if such a sale was of articles that were 
 only fit for a foreign market, or to be used abroad, it would make 
 any difference ; nor that a tingle instance of such a sale as an 
 article of commerce, to any one who choose to buy, might not be 
 deemed the commencement of such a practice, and a public use of 
 the invention, so as to defeat the patent." (2 M. & W. 559 ; 1 Jur. 
 528 ; 1 Web. P. C. 194.) 
 
 (5) LosH V. Hague. N. P. [1838] 
 
 The publicly making and selling an article to one individual, 
 though there be no demand or use for it by the public, will vitiate 
 a subsequent patent. (1 We&.- P. C. 205.) 
 
266 NOVELTY: 
 
 (r) Gibson v. Brand. N. P. [1841] 
 
 Tindal, C. J., said : " If you perceive on the evidence, that the 
 thing which is now sought to be protected by the patent has been 
 used, and for a considerable period, and used so far to the benefit 
 of the public as to be sold to anybody that thought proper to 
 purchase it of those who made it, then it becomes a material 
 question, whether such mode of user is not in your judgment a 
 public using of the article, of the process, or of the invention, before 
 the letters patent were granted." (1 Web. P. C. 628.) 
 
 («) Caepentee v. Smith. N. P. [1841] 
 
 Action for the infringement of a patent for certain improve- 
 ments in locks. It was proved that seven and a half dozen of the 
 locks had been manufactured before the date of the patent, and 
 exported to America. Abinger, C.B., said : " Here you have an 
 article, manufactured by an English manufacturer, and sold, and, 
 in my opinion, if it was sold even for the assumed purpose of 
 being sent to America, I cannot but think that that would be 
 destructive of the novelty of the plaintiff's invention. And here 
 let me be clearly understood ; I do not mean to say, that if a man 
 in America employs an agent to see if he can get an article manu- 
 factured in England by a particular model, and chooses to take out 
 a patent for it himself, but not with a view of making it public at 
 all, I do not mean to say that that man is to be considered as not 
 entitled to the invention afterwards, because he employs a workman 
 to assist him in it, or, that if he had failed entirely, that some 
 other man might make the invention in England ; but where a 
 model is sent to a workman, who sells seven and a half dozen, and 
 sells them for a certain price, I must say I think the invention 
 was used and publicly exercised." (1 Web. P. G. 636.) 
 
 (t) Hancock v. Somervell. N. P. [1851] 
 
 An invention may come into public use by being handed about 
 the country for the purpose of attracting customers, although no 
 actual sale has taken place. (^New. Lon. Jour., vol. 39, p. 158.) 
 
 ,(w) MuLLiNS V. Haet. N. p. [1852] 
 
 The prior deposit of articles, of novel manufacture, in a ware- 
 house for sale, although no sale takes place, is a sufficient publication 
 to defeat a patentee's claim to novelty in the invention of similar 
 articles. (3 Gar. & K. 297.) 
 
 {v) HoNiBALL V. Bloomer. N. P. [1854] 
 
 If an article, subsequently patented, be, even in a single instance, 
 sold in the regular way of business, although it turns out a failure, 
 the patent cannot be supported. (2 Web. P. C. 200.) 
 
 (w) OXLEY V, HOLDEN. [1860] 
 
 The manufacture of a patent article for the puipose of sale, and 
 offering it for sale, although no sale is actually effected, is a user 
 
Question for the Jury. 267 
 
 of tile invention. And semhle, per Byles, J., that it is equally a 
 user, though the article is made merely as a sample, (8 0, B., 
 N. S., 666.) 
 
 (w) HoLLiNS V. Capper & Co. [1888] 
 
 The defendants proved that they had sold to three per.sons 
 before the date of the patent teapots similar to those of which the 
 plaintiff complained as infringements. The judge directed the 
 jury that the defendants had proved anticipation. (5 0. B. 289.) 
 
 Question for the Jury. 
 
 (x) COENISH V. Kbene. [1837] 
 
 Tindal, C.J., in delivering the judgment of the Court, said : 
 " The question raised for the jury was this : whether the various 
 instances brought forward by the defendants amounted to proof 
 that before or at the time of taking out the patent, the manufac- 
 ture was in public use in England ; or whether it fell short of that 
 point, and proved only that experiments had been made in various 
 quarters and had been afterwards abandoned ? This question is, 
 from its nature, one of considerable delicacy ; a slight alteration in 
 the effect of the evidence will establish either the one proposition 
 or the other, and the only proper mode of deciding it is by leaving 
 it to the jury." (1 Web. P. G. 619; 2 Eodg. 294; 3 Bing. N. C. 
 688.) 
 
 {y) Elliott v. Aston. N. P. [1840] 
 
 The question of public use is for the jury; as, whether the 
 instances adduced show a manufacture to have been in public 
 use. (1 Weh. P. 0. 222.) 
 
 (z) Muntz v. Eostke. N. p. [1844] 
 
 It is for the jury to say whether, on reading a prior specifica- 
 tion and comparing it with the plaintiif's specification, the plaintiff 
 has borrowed tis invention from such prior specification. (2 Web. 
 P. C. 107.) 
 
 ,(ffl) Spencer v. Jack. [1864] 
 
 In a suit for an injunction to restrain the infringement of a 
 patent, the Court directed four issues to be tried at law, one 
 amongst them being " whether the invention was a new manu- 
 facture." Tlie judge at common law, in the course of the trial 
 of the issues, expressed his opinion that a question of law would 
 arise, whether there was upon the facts a sufficiency of invention 
 to warrant the granting of a patent. The judge, nevertheless, 
 went on with the trial, and put two questions to the jury : — " Is 
 the invention new?" and, "Is it a substantial improvement?" 
 The jury found for the plaintiff in the affirmative upon both 
 issues. Upon the cause coming back to equity, the Master of 
 the Eolls took up the point of law reseived, without considering 
 the verdict of the jury, and, on the motion of the defendants, 
 
268 OATH. 
 
 granted a new trial : — Held, on appeal, that the judge in equity 
 ought to have considered the verdict of the jury, and that, had 
 he done so, the only point of law remaining would have been 
 this, — whether a combination of things previously well known, 
 which combination could be rightfully denominated a substantial 
 improvement, could be the subject of a patent? — the answer to 
 which must have been in the afSrmative. The order of the Master 
 of the Eolls, directing a new trial, was consequently reversed, 
 (n L. T. Bep., N. S., 242.) 
 
 Oath. Law Officers may examine witnesses on. See Patents Act, 1883, 
 sect. 38, p. 379. 
 
 Objections, 
 
 to grant of patent, pp. 38 to 51 
 
 to extension, pp. 128 to 130 
 
 notice of. See under Practice, pp. 299 to 317. 
 
 Obstructive patent cannot be supported, p. 429 (g). 
 
 Offences, 
 
 falsely representing that article sold is patented. Patents Act, 1883, 
 
 sect. 105, p. 268 
 unauthorised use of Royal Arms. Patents Act, 1883, sect. 106, p. 268 
 article not to be marked "patent" before acceptance of complete 
 specification, p. 268 (c). 
 Patents Act, 1883. 105. (1.) Any person who represents that any 
 article sold by him is a patented article, when no patent has ^been granted 
 for the same, shall be liable for every offence on summary conviction to a 
 fine not exceeding five pounds. 
 
 (2.) A person shall be deemed, for the purposes of this enactment, to 
 represent that an article is patented, if ho sells the article with the word 
 "patent," "patented," or any word or words expressing or implying • that a 
 patent has been obtained for the article stamped, engraved, or impressed on, 
 or otherwise applied to, the article. 
 
 106. Any person who, without the authority of Her Majesty, or any of the 
 Eoyal family, or of any Grovernment Department, assumes or uses in connection 
 with any trade, business, calling, or profession, the Royal arms, or arms so 
 nearly resembling the same as to be calculated to deceive, in such a manner 
 as to be calculated to lead other persons to believe that he is carrying on his 
 trade, business, calling, or profession by or under such authority as aforesaid, 
 shall be liable on summary conviction to a fine not exceeding twenty 
 pounds. 
 
 (c) Eeg. v. Wallis. [1886] 
 
 The defendant was selling a lamp with " patent " on it when 
 he had only lodged a provisional specification, which had been 
 accepted : — Seld, in the Mansion House Police Court, that sect. 14 
 of the Act of 1883 (see p. 396) did not justify this, and a penalty 
 imposed under sect. 105. (3 0. B. 1.) 
 
 (d) Eeg. v. Ceampton. [1886] 
 
 The defendant sold several electric bells marked "patent" 
 before the patent had been granted, and the magistrate followed 
 Beg. V. Wallis, and imposed a penalty. (3 0. B. 367.) 
 
PATENT. 269 
 
 Officers. Appointment of., Sect. 83 of Patents Act, 1883, provides that 
 the Board, of Trade may appoint the comptroller, and examiuers, and other 
 officers. 
 
 Old Machine. Application of, to new use. See pp. 522 to 532 
 „ ,, Addition to : See pp. 518 to 522. 
 
 Omission, in Specification, pp. 436 {g), 439 (m) 
 
 „ of part of process. See pp. 513 {d), 514 (i), 515 (y). 
 
 Opposition, 
 
 to amendment. See under Amendment. 
 
 to grant. See Application for Letters Patent, Opposition, pp. 38 to 51 
 
 to extension. See Extension, pp. 107, 140 (j), (r), 141, 142. 
 
 Order, 
 
 of performing process, chaiige in, p. 514 Qf) 
 for injunction, form of, p. 351 (e) 
 
 construction of, p. 352 (/) 
 of Privy Council, revocation of, p. 105 (»). 
 
 Particulars of Breaches. See pp. 294 to 299 
 
 of Objections. See pp. 299 to 317. 
 
 Parties, to action. See pp. 286 to 290. 
 
 Partnership, « 
 
 what agreement creates, pp. 207 (*), (h), 208 (m) 
 
 interest creates, p. 206 (jj) 
 in prospective patents for particular object, p. 207 (y) 
 right severally to use patent under, p. 208 (m) 
 estoppel in cases of, pp. 91 {q), (s), (f), 338 (s) 
 disclosure of an invention to partner, p. 254 (i) 
 partner of licensee not estopped, p. 92 (m) 
 right to use patent after dissolution of, p. 208 (o). 
 
 Patent, 
 
 definition of. Patents Acts, 1883, sect. 46, p. 269 
 
 extent of, sect. 16, p. 269 
 
 form of, schedule 1, p. 270 
 
 date of, sect. 13, p. 80, sect. 26 (8), p. 402 and sect. 103, p. 61 
 
 term of, sect. 17, p. 559 , 
 
 to be for one invention only, sect. 33, p. 269 
 
 test of unity of invention ia common purpose, p. 271 (d), (e), (/). 
 
 Patents Act, 1883, sect. 46. In and for the purposes of this Act, "patent," 
 means letters patent for an invention. 
 
 Sect. 16. Every patent when sealed shall have effect throughout the United 
 Kingdom and the Isle of Man. 
 
 Sect. 33. Every patent may be in the form in the First Schedule to this 
 Act, and shall be granted for one invention only, but may contain more than 
 one claim ; but it shall not be competent for any person in an action or other 
 proceeding to take any objection to a patent on the ground that it comprises 
 more than one invention. 
 
270 PATENT. 
 
 Poem of Patent. 
 
 VICTORIA, by tke grace of God, of the United Kingdom of Great Britain 
 and Ireland, Queen, Defender of the Faith : To all to whom these presents 
 shall come greeting : Whereas John Smith of 29, Perry Street, Birmingham, 
 in the county of Warwick, Engineer, hath by his solemn declaration 
 represented unto us that he is in possession of an invention for "Improve- 
 ments in Sewing Machines," that he is the true and first inventor thereof, and 
 that the same is not in use by any other person to the best of his knowledge 
 and belief : And whereas the said inventor hath humbly prayed that we 
 would be graciously pleased to grant unto him (herein-after together ,with 
 his executors, administrators, and assigns, or any of them, referred to as the 
 said patentee) our Boyal Letters Patent for the sole use and advantage of his 
 said invention : And whereas the said inventor hath by and in his complete 
 specification particularly described the nature of his invention : And whereas 
 we being willing to encourage all inventions which may be for the public 
 good, are graciously pleased to condescend to his request : 
 
 Know ye, therefore, that We, of our especial grace, certain knowledge, and 
 mere motion do by these presents, for us, our heirs and successors, give and 
 grant unto the said patentee our especial licence, full power, sole privilege, 
 and authority, that the said patentee by himself, his agents, or licensees, and 
 no others, may at all times hereafter during the term of years herein 
 mentioned, make, use, exercise, and vend the said invention within our 
 United Kingdom of Great Britain and Ireland, and Isle of Man, in such 
 manner as to him or them may seem meet, and that the said patentee shall 
 have and enjoy the whole profit and advantage from time to time accruing by 
 reason of the said invention, during the term of fourteen years from the date 
 hereunder written of these presents ; and to the end that the said patentee 
 may have and enjoy the sole use and exercise and the full benefit of the said 
 invention. We do by these presents for us our heirs and successors, strictly 
 command all our subjects whatsoever within our United Kingdom of Great 
 Britain and Ireland, and the Isle of Man, that they do not at any time during 
 the continuance of the said term of fourteen years either directly or indirectly 
 make use of or put in practice the said invention, or any part of the same, nor 
 in anywise imitate the same, nor make or cause to be made any addition 
 thereto or subtraction therefrom, whereby to pretend themselves the inventors 
 thereof, without the consent licence or agreement of the said patentee in 
 writing under his hand and seal, on pain of incurring such penalties as may 
 be justly inflicted on such offenders for their contempt of this our Royal 
 command, and of being answerable to the patentee according to law for his 
 damages thereby occasioned : Provided that these our letters patent are on 
 this condition, that, if at any, time during the said term it be made to appear 
 to us, our heirs, or successors, or any six or more of our Privy Council, that 
 this our grant lis contrary to law, or prejudicial or inconvenient to our 
 subjects in general, or that the said invention is not a new invention as to the 
 public use and exercise thereof within our United Kingdom of Great Britain 
 and Ireland, and Isle of Man, or that the said Patentee is not the first and 
 true inventor thereof within this realm as aforesaid, these our letters patent 
 shall forthwith determine, and be void to all intents and purposes, notwith- 
 standing anything herein-before contained : Provided also, that if the said 
 patentee shall not pay all fees by law required to be paid in respect of the 
 grant of these letters patent, or in respect of any matter relating thereto at 
 the time or times, and in manner for the time being by law provided ; and 
 also if the said patentee shall not supply or cause to be supplied, for our 
 service all such articles of the said invention as may be required by the 
 officers or commissioners administering any department of our service in such 
 manner, at such times, and at and upon such reasonable prices and terms as 
 shall be settled in manner for the time being by law provided, then, and in 
 
PATENTEE. 271 
 
 any of the said cases, these our letters patent, and all privileges and 
 advantages whatever hereby granted shall determine and become void 
 notwithstanding anything herein-before contained : Provided also that nothing 
 herein contained shall prevent the granting of licences in such manner and 
 for such considerations as they may by law be granted : And lastly, we do 
 by these presents for us, our heirs and successors, grant unto the said 
 patentee that these our letters patent shall be construed in the most 
 beneficial sense for the advantage of the said patentee. In witness whereof 
 we have caused these our letters to be made patent this one 
 
 thousand eight hundred and and to be sealed as of the 
 
 one thousand eight hundred and 
 
 To he for One Invention Only. 
 
 (d) Jones' Patent. 
 
 The general object of the invention is the test by which to 
 decide whether a provisional specification should be refused on 
 the ground that it contains more than one invention. If you have 
 a particular general object — e.g., to make rails rest more securely, 
 and you describe two or three cognate devices for carrying it into 
 effect, they are all one invention ; but if there is no common 
 purpose and no connection between them except that both are 
 used in connection with rails, there would be two inventions. 
 {Griff. 266.) 
 
 (e) Heaeson's Patent. [1886] 
 
 Hearson applied for a patent for " improvements in apparatus 
 for rapidly heating flowing water, a part of whicli improvements is 
 applicable to other purposes : " — Held, that the part italicised in the 
 title, and the corresponding part in the provisional specification, 
 must be omitted. {Griff. 266.) 
 
 (/) Eobinson's Patent. 
 
 Application for a patent for " improvements in the art of pro- 
 ducing and utilizing induced electrical currents for telegraphy 
 and other purposes : " — Held, that the patentee might elect either 
 to protect his appliance for all purposes or to protect the improved 
 telegraphic apparatus described ; and the words " for telegraphy 
 and other purposes," and the description of the telegiaphic appa- 
 ratus, were struck out. {Griff. 267.) 
 
 Patent Agent. See Agent, p. 3. 
 
 Patentee, ' 
 
 Who may he — 
 Patents Act, 1883, sects. 4, 34, and 46, p. 272. 
 
 Mrst and true inventoi — ■ 
 
 of invention new in England, p. 272 (g) 
 
 known but not published, p. 272 (h) 
 
 communicated by British subject, p. 277 (5) 
 
 simultaneous discoveries, p. 272 (i) 
 
 servant while in employ of master, pp. 273 (/c), 276 (w) 
 
 may employ professional assistance, p. 273 (I) 
 
272 PATENTEE : 
 
 must be able to claim the merit of the Invention, pp. 275 (v), 276 (y) 
 official inventing in course of his duty, p. 276 (a). 
 
 Importer of Foreign invention — 
 
 may take out patent in his own name, pp. 276 (a), 278 (e), Qj), 279 (li) 
 although holding in trust for foreigner, p. 278 (d^ 
 where the communicant is a British subject, p. 278 (e) 
 must not take patent as for original invention, p. 145 (Z) 
 unless he has sufficiently improved it, pp. 278 (e), 279 (K). 
 
 Who may he. 
 
 Patents Act, 1883, Sect. 4. (1.) Any person, whether a British subject or 
 not, may make an application for a patent. 
 
 (2.) Two or more persons may make a joint application for a patent, and a 
 patent may be granted to them jointly. 
 
 ' Sect. 46. In and for the purposes of this Act, "Patentee" means the 
 person for the time being entitled to the benefit of a patent. 
 , Sect. 34. (1.) If a person possessed of an invention dies without making 
 application for a patent for the invention, application may be made by, and a 
 patent for the invention granted to, his legal representative. 
 
 (2.) Every such application must be made within six months of the 
 decease of such person, and must contain a declaration by the legal representa- 
 tive that he believes such person to be the true and first inventor of the 
 invention. 
 
 True and First Inventor. 
 
 (g) Edoeberey v. Stephens'. [1691] 
 
 A grant of a monopoly may be to the first inventor, by the 
 21 Jao. 1 ; and, if the invention be new in England, a patent may 
 be granted, thotigli the tbing was practised beyond sea bsfore ; for 
 the statute speaks of new mamifactures within tMs realm ; so that, 
 if it be new bare, it is within the statute; for the Act intended to 
 encourage new devices useful to the kingdom, and whether learned 
 by travel or by study, it is the same thing. (2 Salh. 447 ; Cowh. 84 ; 
 Bav. P. C. 36 ; 1 Web. P. C 35 ; 1 Carp. P. G. 85.) 
 
 (K) Dollond's Patent. [1758] 
 
 Patent for a new method of making the object-glasses of refract- 
 ing telescopes. Before the date of the patent Dr. Hall had made 
 and used object-glasses, of a precisely similar construction in his 
 own observatory, but had not made any publication of their mode 
 of construction or use : — Held, that this was not such a prior use 
 as to invalidate the patent. (Git. in Boulton v. Bull, 2 S. Bl. 469, 
 470, 487 ; Bav. P. G. 170, 171, 172, 199; 1 Web. P. C. 43; 1 Carp. 
 P. C. 28.) 
 
 (i) EORSYTH V. ElVIERE. [1819] 
 
 If several persons simultaneously discover the same thing, the 
 party first communicating it to the public, under the protection of 
 letters patent, becomes the legal inventor. (Chittijs Prerog. Crown, 
 182; 1 Web. P. C. 97; 1 Carp. P. G. 401.) 
 
True and First Inventor. 273 
 
 (j) K. V. Wheeler. Sci. fac. [1819] 
 
 Abbott, C.J., delivering the judgment of the Court, said : '' If 
 the patentee has not invented the matter or thing of which he 
 represents himself to be the inventor, the consideration of the 
 royal grant fails, and the grant consequently becomes void. And 
 this will not be the less true, if it should happen that the patentee 
 has invented some other matter or thing, of which, upon a due 
 representation thereof, he might have been entitled to a grant of 
 the exclusive use." (2 B. & Aid. 349.) 
 
 (V) Barber v. Walduck. N. P. [1823] 
 
 Action for the infringement of a patent for an improvement in 
 making hats. One of the plaintiif's witnesses proved that he had 
 made the improvement, which was the subject of the patent, while 
 employed in their workshop. Holroyd, J., ordered a nonsuit. 
 {Git. IG.&P. 567 ; 1 Carp. P. 0. 438.) 
 
 (0 Bloxam v. Elsee. N. p. [1825] 
 
 Action for the infringement of a patent for "a machine for 
 making paper in single sheets without seam or joinings." The 
 principle of this invention consisted in receiving the pulp to be 
 made into paper upon an endless wire web, stretched upon re- 
 volving cylinders, so that the paper was moved forward as fast 
 as it was formed. The patentee discovered the principle of this ' 
 invention, but the mechanical details necessary for carrying the 
 invention into complete effect were numerous and complicated, 
 and therefore he engaged Mr. Donkin, an engineer, to give 
 him his professional assistance, and several parts of the machine 
 were suggested to the patentee by Mr. Donkin. It was objected 
 by the defendants that the patentee, under these circumstances, 
 could not be the inventor ; but it was answered that Mr. Donkin 
 was merely acting as the patentee's servant, and the objection was 
 not sustained. (1 G. & P. 567 ; 1 Web. P. G. 132, n. ; 1 Garjp. P. G. 
 484.) 
 
 (n) Lewis v. Marling. [1829] 
 
 Action for an infringement of a patent for certain improve- 
 ments on shearing machines. It was proved by the defendant, 
 that the specification of a similar machine had previously been 
 enrolled in America, that a model of an exactly similar machine 
 had been exhibited to three or four persons in England, and that 
 a manufacturer in England had commenced the construction of 
 a machine from the American specification. Bay ley, J., said : 
 " If it had been shown that the plaintiff had seen the model, and 
 had borrowed from it, he would not have been the true inventor, 
 and would, therefore, have misled the Crown ; but if I made a 
 discovery, and am enabled to produce an effect from my own 
 experiments, judgment, and skill, it is no objection that some 
 one else has made a similar discovery by his mind, unless it has 
 become public. So, if .1 introduce a discovery, bond fide made, I 
 
 T 
 
274 . PATENTEE: 
 
 may have a patent for it, though a person might have received) 
 privately a communication from abroad, which would have enabled 
 him to have made the machine." (1 Web. P. C. 493.) 
 
 (o) MiNTER «, Wells. N. P. [1834] 
 
 Action for the infringement of a patent for " improvements in 
 the construction, making, or manufacturing of .cTiairs." The 
 patentee claimed "the application of a self-adjusting leverage 
 to the back and seat of a chair, whereby the weight on the seat 
 acts as a counterbalance to the pressure against the back of such 
 chair, as above desciibed." The defendants contended that the 
 invention was made, not by the patentee, but by a person by 
 the name of Sutton. Alderson, B., in summing up to the jury, 
 said : " He (the patentee) claims under the patent, stating it in 
 his petition to the Crown, that he is the true inventor of the 
 machine in question ; and if it could be shown that he was not 
 the true inventor, but that some one else had invented it, the 
 Crown is deceived in that suggestion, which was the foundation 
 on which it granted the patent ; and then tlie law is, that a 
 patent obtained under such circumstances would be void, and 
 no action could be maintijined against a party for the infringe- 
 ment of the patent, by reason of the suggestion to the Crown 
 not being true." (1 Web. P. C. 121 ; 1 Carj,. P. 0. 622.) 
 
 (p) Cornish v. Keene. N. P. [1835] 
 
 Action for the infringement of a patent, which was held 
 invalid for want of novelty. Tindal, C.J., in summing up to 
 the jury, said : " Sometimes it is a material question to determine 
 whether the party who got the patent was the real and original 
 inventor or not, because these patents are granted as a reward, 
 not only for the benefit that is conferred upon the public by the 
 discovery, but also to the ingenuity of the first inventor ; and, 
 although it is proved that it is a new discovery so far as the 
 world is concerned, yet if anybody is able to show that although 
 that was new — that the party who got the patent was not the 
 man whose ingenuity first discovered it, that he had borrowed 
 it from A. or B., or taken it from a book that was piinted in 
 England, and which was open to all the world — then, although 
 the public had the benefit of it, it would become an important 
 question whether he was the first and original inventor of it." 
 (1 Web. P. C. 607.) 
 
 (g) LosH V. Hague. N. P. [1838] 
 
 Abinger, C.B. : " If a man claims by his patent a number of 
 things, as being the inventor of them, whether they consist of 
 impiovements or original inventions, and it turns out that some 
 of them be not original and not improvements, his patent is void." 
 (1 Web. P. G. 203.) 
 
 (»•) Gibson v. Brand. N. P. [1841] 
 
 Tindal, C.J., in summing up to the jury in this case, said : 
 
Trv£. and First Inventor. 275 
 
 *' A man may publish to tlie world that which is perfectly new 
 in all its use, and has not before been enjoyed, and yet he may 
 not be the first and true inventor : he may have borrowed it 
 from some other person, he may have taken it from a book, he 
 may have learnt it from a speoiti cation, and then the legislature 
 never intended that a person who had taken all his knowledge 
 from the art of another, from the labours and assiduity or 
 ingenuity of another, should be the man who was to receive the 
 benefit of another's skill. There is some distinction, although 
 perhaps not a very broad one, between the plea which alleges the 
 plaintiffs were not the first and true inventors, and that on which 
 I conceive the principal question between the parties will turn — 
 the third in order, viz., whether the subject-matter of this patent 
 was known in England at the time the letters patent .were 
 granted." (l Weh. P. C. 628.) 
 
 («) Walton v. Potter. IST. P. [1841] 
 
 Tindal, C.J. : "Though the matter may not have been usel, 
 the party is not entitled to his patent unless he is the first and 
 true inventor ; therefore, if the subject-matter of the patent has 
 been discovered, has been published in a dictionary, for example, 
 though it has not been reduced into practice, if a man merely 
 adopts it, the merit is so small that his patent for it would be 
 worth nothing." (1 Web. P. C. 592.) 
 
 (t) Walton v. Bateman. N. P. [1842] 
 
 Cresswell, J. : " The party obtaining the patent must be the 
 true and first inventor in this country. If he import from a 
 foreign country that 'which others at the time of the making of 
 such letters patent and grants did not use,' it will suffice." 
 (1 Web. P. a 615.) 
 
 (m) Stead v. Williams. N. P. [1843] 
 
 Cresswell, J., in directing the jury, said : " Then comes this 
 question, that, long before the patent was granted, the invention 
 was publicly known in this country. Now, as to its being 
 publicly known in this country, I take it that there is a great 
 difference between the knowledge of it as a thing that would 
 answer, and was in use, and the knowledge of it as a mere ex- 
 periment that had been found to be a failure and thrown aside. 
 If you are dealing with an article of merchandise, or with an 
 article of ordinary use — if a person has had a scheme in his 
 head, and has carried it out, but, after a trial, has thrown it 
 aside, and the thing is forgotten and gone by^ — then, another 
 person le-introducing it, may, within the meaning of this Act, be 
 the inventor and the first user of it, so as to justify a patent." 
 (2 Web. P. a 135.) 
 
 (v) MuNTZ V. Foster. N. P. [184i] 
 
 Tindal, C. J. : "First of all, it is said that the manufacture 
 which is described in this patent is not a new one. In the next 
 
 T 2 
 
276 PATENTEE : 
 
 place it is said, even if it is a new one, that the plaintiff is not 
 the true and first inventor. Now these two objections go very 
 nearly to the same point ; they are not precisely the same, there 
 may be a difference between them, but it w^ill be very much the 
 same train of reasoning that will apply to the one as to the other. 
 It may be very true that the manufacture might be a new manu- 
 facture, not known in this kingdom till the time of the patent, 
 and yet it might also be true that Mr. Muntz might not be the 
 first and true inventor; because, although a man may take it from 
 an old book, or from some description that he has got elsewhere, 
 where it has been worked, although not generally known, . . . yet 
 if he had taken it from CoUins's specification, ... he would not be 
 entitled to that benefit which the statute of Jamf s intended, namely, 
 for the merit of having by experiment, or by imitation, or by his 
 sagacity, made a discovery himself ; but would only be clothing 
 himself with a discovery which would be the result of another 
 man's labour." (2 Web. P. G. 102.) 
 
 (vi) Allen v. Eawson. [1846J 
 
 In this case, Tindal, C.J., said : " It would be difficult to 
 define how far the suggestions of a workman, employed in the 
 construction of a machine, are to be considered as distinct inven- 
 tions by him, so as to avoid a patent incorporating them taken out 
 by his employer. Each case must depend upon its own merits. 
 But, when we see that the principle and object of the invention 
 are complete without it, I think it is too much that a suggestion 
 of a workman, employed in the course of the experiments, of 
 something calculated more easily to carry into effect the conceptions 
 of the inventor, should render the whole patent void." (1 G. B. 
 574.) 
 
 (a;) Nickels v. Eoss. [1849] 
 
 A party availing himself of information from abroad is an 
 inventor within 21 Jac. 1, c. 3, s. 6. (8 G. B. 679.) 
 
 (?/) J« re Honiball's Patent. [1855] 
 
 A first and original inventor means a person who could claim 
 the merit of first invention, without reference to the user. (9 Moo. 
 P. G. G. 378.) 
 
 (z) Patterson v. The Gas Light and Coke Company. H. li. 
 
 [1876-7] 
 
 The plaintiff, one of the three gas referees appointed by the 
 Board of Trade, under the City of London Gas Act, 1868, obtained 
 a patent while acting as such referee, for " improvements in the 
 purification of coal gas ; " and subsequently filed a bill against the 
 defendants to restrain them from infringing the same. The appli- 
 cation for the patent was dated March 9, 1872, and the first pub- 
 lication of the invention was in an ofiicial report, published by all 
 the referees jointly, which bore date January 31, 1872, but was 
 kept back from the official authorities until the 26th of March 
 
True' and First Inventor. 277 
 
 following, and was generally circulated a few days after. The 
 official report of the referees contained instructions and suggestions 
 for the guidance of gas companies ; and the gas referees are re- 
 quired by the above Act of Parliament to prescribe and certify 
 the maximum amount of impurity in each form with which gas 
 supplied by a company shall be allowed to be charged. 
 
 James, L. J., on appeal from V.-C. Bjicon, said : " Although it is 
 not necessary for the determination of this suit to pronounce any 
 final decision on this point, we deem it right to say that we think 
 it, at the very least, very questionable whether it can be com- 
 petent for a member of an official commission or committee to take 
 out a patent for the subject matter of their official investigation, 
 for the results of such investigation embodied in their official 
 report to the public authorities, or to treat as piratical infringers 
 those who have followed the suggestions and directions contained 
 in such report. . . . The consideration for every patent is the com- 
 munication of useful information to the public. What considera- 
 tion is there when the information was already the property of 
 the State ? " (2 Gh. D. 832.) 
 
 In the House of Lords Lord Gordon said : " The public not only 
 received no consideration for the patent, but the subject of it was 
 actually the property of the public. I entertain, therefore, the 
 gravest doubt whether the appellant was not legally precluded 
 from obtaining the patent, and whether it is not altogether void." 
 (3 App. Cos. 251.) 
 
 (a) Cheatin v. Walker. V.-C. B. [1876] 
 
 A patent may be granted jointly to an adult and a minor. 
 (5 Ch.B. 868.) 
 
 (6) Maesden V, The Saville Street Foundry. C. A. [1878] 
 
 The communication, made in England by one British subject to 
 another, of an invention does not make the person to whom the 
 communication is made the first and true inventor within the 
 meaning of the statute 21 Jac. 1, c. 3, so as to enable him to take 
 out letters patent for the invention. 
 
 Jessel, M.E., in delivering judgment, said: "This is a mere 
 experiment. From the time of the passing of the statute 21 Jac. 1, 
 o. 3, down to the present time, no one, so far as I know, has con- 
 tended in a court of law, much less has any court of law allowed, 
 the validity of such a contention as that a communication made in 
 England by one British subject to another British subject can be 
 patented by the receiver of a communication, so as to make the 
 receiver the true and first inventor within the meaning of the 
 patent laws. It has been argued that, before the statute of James, 
 such patents were valid and were allowed by the judges, and that 
 the statute merely restricts the duration of the patent, and does 
 not destroy the right as it previously existed. Even supposing 
 that were so, the statute defines who are considered to be worthy 
 recipients of the grant of such a monopoly, as it was then called, 
 and the definition so given has been allowed ever since. It is 
 
278 PATENTEE. 
 
 difficult to say, a priori, on what principle a person who did not 
 invent anything, but who merely imported from abroad into this 
 realm the invention of another, was treated by the judges as being 
 the first and true inventor. ... It has never been declared by any 
 judge or authority that there is such a principle, and, not being 
 able to find one, all I can say is, that I must look upon it as a sort 
 of anomalous decision, which has acquired by time and recognition 
 the force of law." (i. B., 3 Exch. D. 203-4.) 
 
 (c) Kurtz v. Spence. [1888] 
 
 The question who is first and true inventor is a question of fact, 
 which is not concluded by the grant of letters patent. A subse- 
 quent patentee is at liberty to prove himself first and true inventur. 
 Two partners, Held, to be the first and true inventors, though 
 many stages in the discovery were due to a subordinate agent 
 alone, and although one partner devoted himself mainly to the 
 commercial business of the firm. (5 0. B. 179.) 
 
 Importer of Foreign Invention. 
 
 (d) Beard v. Egerton. [1846] 
 
 A patent granted to a British subject, in his own name, for an 
 invention communicated to him by a foreigner, the subject of a 
 state in amity with this country, is not void, although such patent 
 be in truth taken out, and held by the grantee, in trust for such 
 foreigner. (3 G. B. 97.) 
 
 (e) MiLLiGAN V. Maesh. [1866] 
 
 When a patent is taken out as for an original invention, the 
 subject of the patent being in fact a communication from a British 
 subject resident abroad, the patent is void. Semhle, that an agent 
 in this country of an inventor abroad receiving a confidential 
 communication of an invention, not in a practically useful state, 
 may take out a patent for his own benefit, if he, pursuing the idea 
 thus thrown out, discovers a practical way of carrying it into 
 efiect. (2 Jur., N. S. 1083.) 
 
 (/) Plimpton v. Malcolmson. M. E. [1876] 
 
 There is no law which says that if a man from abroad commu- 
 nicates to A., who communicates to B., B. may not take out the 
 patent. When the patent is for an invention communicated from 
 abroad, the patentee need only tell the public what he himself 
 knows ; the patent is not void because the original inventor knew 
 something more, which he did not communicate to the public. 
 (L. B., 3 Gh. D. 652.) 
 
 {g) In re Wieth's Patent. L. C. [1879] 
 
 Letters patent might be granted to an alien resident abroad for 
 an invention communicated to him by another alien also resident 
 abroad. (L. B., 12 Gh. D. 303.) 
 
PRACTICE. 279 
 
 Qi) In re Avery's Patent. [1887] 
 
 Avery, a subject of the United States, employed an attorney, 
 wlio in turn appointed one Lindsay to take out a patent in England 
 for Avery's invention. Lindsay took out a patent in his own 
 name for the invention, together with some improvements of his 
 own, without stating in the specification that it or any part of it 
 was communicated from abroad; and made a statutory declaration 
 that he was the true and first inventor. The Court declined to 
 express an opinion whether the patent was or was not void, the 
 case being decided on another ground. (36 Ch. D. 307.) 
 
 Payments, enlargement of time for. Patents Act, 1883, sect. 17, p. 559 
 
 calculation bf time for, p. 143 
 
 if not made, patent ceases, sect. 17, p. 559. 
 Penalty for falsely representing arliole to be patented. See Offences, p. 268 
 
 for unauthorised use of Koyal Arms. Patents Act, 1883, sect. 106, p. 268. 
 Personal representative may apply forpatent. Patents Act, 1883, sect. 34, p. 81. 
 Post. 
 
 Patent Act, 1883, sect. 97. (1) Any application, notice, or other document 
 authorised or required to be left made or given at the Patent OfSce or to the 
 comptroller, or to any other person under this Act, may be sent by a prepaid 
 letter through the post; and if so sent shall be deemed to have been left made 
 or given respectively at the time when the letter containing the same would 
 be delivered in the ordinary course of post. (2) In proving such service or 
 sending, it shall be sufBoient to prove that the letter was properly addressed 
 and put into the post. 
 
 Patent Rule, 1890, 16a is to the same effect. 
 
 Practice, 
 
 Parties to the Action, 
 plaintia^ — ^patentee and assignee jointly, p. 286 («) 
 assignees, pp. 287 (o), (p), 288 («), («/) 
 
 of bankrupt patentee, p. 286 (ft) 
 of part' of invention, p. 287 (t) 
 survivor of tenants in common, p. 287 (s) 
 licensees, p. 288 (w) 
 
 one of several joint owners, p. 288 (<), 289 (a) 
 agent for sale of invention, p. 288 (z) 
 mortfjagee need not he joined, p. 290 (e) 
 defendant — original grantee, p. 288 (u) 
 
 person physically using invention, not person giving instruc- 
 tions, p. 287 (r) 
 directors of company, for acts of workmen, p. 288 (x) 
 
 though in contravention of orders, p. 288 (a;) 
 foreigner in this country, p. 287 {q) 
 assignor, p. 288 («/) 
 out of the jurisdiction, p. 288 (v) 
 company claiming equitable interest only, p. 286 (to) 
 purchasers of business not added as, p. 289 (6) 
 carriers and consignees, p. 289 (d) 
 third paity appearing as to indemnity only, p. 289 (c). 
 
 bill should show sufBcieht case without admissions in defendant's 
 answer, p. 290 (i) 
 
280 PEACTICE. 
 
 need not set out specification, p. 290 (/), (Ji) 
 
 nor aver novelty of invention, p. 291 (U) 
 
 as to statement of payment of stamp duties, quiere, p. 291 (/) 
 claim that action should be supplemental to discontinued action struck 
 
 out, p. 292 {p) 
 pleas, pp. 219 (s^), 290 {gj, 291 (to), 292 fe), (r), 293 («') 
 
 Consolidation of Actions — 
 order for, validity tried in first instance, p. 293 («) 
 advice respecting, p. 294 («) 
 order for not revoked on ground of neglect to appeal, p. 294 (w). 
 
 Particulars of Breaches — ■ 
 
 plaintiffs must deliver. Patents Act, 1883, sect. 29 (1), p. 294 
 
 certificate as to proof of, Patents Act, 1888, sect. 29 (6), p. 294 
 
 court has common law right to order, p. 295 (a;), (y) 
 
 should point out particular parts of invention infringed, pp. 295 (x), (a), 
 296 (e) 
 
 unless it would emharrass the plaintiff, p. 295 (2/) 
 
 or the invention consists of but one process, p. 295 (z) 
 
 or when thing alleged to be an infringement is an exhibit, p. 297 (/) 
 
 should specify instances of infringement intended to be proved, p. 296 {b) 
 
 as to particular persons and occasions, p. 295 (z) 
 
 should not be more complicated than specification, p. 295 (z) 
 
 to be read with pleadings, p. 296 (c) 
 
 insufficiency of defendant's answers to interrogatories no answer to 
 application for better, p. 295 (a) 
 
 amendment of, p. 319 (w) 
 
 need not be so detailed as particulars of objection, p. 298 (m) 
 
 including acts of third party, p. 298 (»). 
 
 Particulars of Objections — 
 generally, 
 
 defendant must deliver. Patents Act, 1883, sect. 29, p. 299 
 jurisdiction of court, p. 300 (r) 
 further and fuller, may be ordered by judge, pp. 300 (r), 301 (v), 802 (c), 
 
 310 (yi) 
 should generally afford more information than pleas, pp. 300 (r), 301 (v), 
 
 (z), 802 (6) 
 not sufficient unless applicable to some plea, p. 301 (u), (w), (x) 
 omission to give, on pleading, p. 300 (t) 
 confined to matter affecting validity of patent, p. 302 (d) 
 not part of the record, p. 302 (a) 
 
 generality of, cannot be objected to at trial, pp. 301 (v), 310 (m), 314 (z) 
 not intended to be urged before jury, p. 300 (i) 
 plaintiff's particulars of breaches cannot be called in aid of, p. 310 (Jc) 
 by reference to co-defendant's particulars, p. 305 (r) 
 amendment of, pp. 305 (p), (q), (s), (t), 306 (y), (w), (x), (a) 
 as to first and true inventor — 
 need not say who was, p. 307 (z) 
 
 as to prior user — 
 
 by A. B. " and others," pp. 304 (I), 308 (b), (c), (e), 311 (0) 
 
 by a particular class of persons, pp. 303 {/), 309 (h) 
 
 addresses of users, pp. 308 (e), 310 (k) 
 
 at A. B. " and elsewhere," pp. 304 (0, 309 (h), (j) 
 
 generally at particular places, pp. 303 (j), 310 (l) 
 
 of what part of invention, pp. 308 (/), (g), 312 (s), 313 (v), (w) 
 
 publication in books, pp. 309 (h), (i), 313 (x) 
 
 circumstances of, pp. 304 (t), 307 (z) 
 
PEAOTICE. 281 
 
 amendment of, pp. 302 (/), 303 (^r), 304 Q), (m), 305 (p), (q), (s), (t), 
 306 (a;), (a) 
 
 of a particular preparation, p. 303 (y) 
 
 dates of, pp. 304 (0, 312 (p), (0 
 
 general public knowledge, p. 313 (a;) 
 
 must state the claims, but not the parts of the inTention anticipated, 
 pp. 312 (s), 313 (w) 
 OS to specification, 
 
 variance of, from patent and drawings, p. 314 (y) 
 
 deception in, p. 314 (z) 
 
 insufficiency of generally, pp. 314 (z), (a), 315 (c), (d*) 
 
 distinguishing what is new from what is old, p. 314 (h) 
 
 not describing most beneficial method, p. 314 (b) 
 
 variance between provisional and complete, p. 315 (d) 
 as to fraud and misrepresentation — 
 
 in specification, p. 314 (b) 
 
 on procuring report of Privy Council, p. 301 («/) 
 certificate that they have been proven or were reasonable and proper, 
 
 no costs of, allowed without, Patents Act, 1883, sect. 29 (6), p. 299 
 
 court must be satisfied that they are reasonable before granting, p. 316 (j') 
 
 as to particulars not proved as unnecessary, pp. 315 (e), 316 (/), («'), 
 317 {k*), (0, (o), O), 318 (9), (r), (s) 
 
 granted if defendant was prepared to prove them, pp. 316 (i), 317 {p) 
 
 court will not h<3ar case for purpose of giving, p. 318 (j) 
 
 but may give certificate on reading, p. 318 (s) 
 
 Court of Appeal has power to grant, pp. 317 (ra), 318 (s^) 
 
 not granted on petition for revocation, p. 317 (jn) 
 
 limited to objections put in cross-examination of plaintiff, p. 317 (Jc). 
 Interrogatories and Discovery — 
 
 rest on same principle, p. 318 (t) 
 
 defendant must answer fully, pp. 318 (<), 320 (aj), (z), 321 (/) 
 
 even though he disclose trade secrets, pp. 320 (a;), (a), 324 (g^) 
 and admit plaintiff's title, p. 318 (0 
 
 exception in case of title deeds and professional communications, p. 318 (i) 
 
 plaintiff entitled to separate answer from each of numerous delendants, 
 p. 320 (y) 
 
 not allowed of instances of prior user, p, 320 (6), (c) 
 
 formerly confined to question of infringement, when denied, p. 319 (v) 
 
 of plaintiff's case, p. 321 (e) 
 
 allowed where answers would expose third parties to actions, pp. 319 (u^), 
 321 (/) 
 
 form and extent of, p. 320 (d) 
 
 not allowed before declaration, p. 319 (to) 
 
 rules as to, are same for patents as for other cases, p. 323 (Z) 
 
 communications made to patent agent who is also solicitor, p. 323 (m) 
 
 documents used in prior litigation as to same patent, pp. 323 (n), (o), 
 324 (?) 
 
 may reter to matters covered by particulars, p. 322 (j ) 
 
 allowed on a petition for revocation, p. 323 (k). 
 
 ion — 
 
 may be granted whenever action pending, sect. 30, p. 324 
 not a matter of course, p. 326 (x) 
 right to, exercised as in Chancery, p. 326, (J) 
 affidavits in support of, p. 326 (y) 
 of plaintiff's patent article, p. 325 (v) 
 of defendant's machinery, pp. 325 (s), (0. («)> 326 (a), (5) 
 specimens for analysis, p. 327 (c) 
 
282 PEACTICE. 
 
 of defendant's books, pp. 319 («), 324 {p), 326 (z), (J) 
 
 during pendency of appeal, p, 328 (A) 
 
 where trade secrets would be disclosed, pp. 325 {vi), 328 (/), 329 (J), 
 
 330 (fti) 
 when granted, p. 328 (e), (/), (jr) 
 confined to several classes of machines sold, p. 328 (e) 
 and to those as to which prima facie case has been shown, p. 330 (m) 
 of plaintiff's process granted to defendants, pp. 325 (f), 329 (K) 
 does not compel defendant to work his machinery, p. 329 (J) 
 of defendant's evidence of prior user, cannot be ordered, p. 330 («). 
 
 Injunction— 
 
 attachment for disregard of, pp. 331 (jp), 333 (j/) 
 where infringement is threatened, pp. 163 (J^), 332 (vi) 
 against master of ship fitted with patented invention, p. 332 (a;) 
 against agent of foreign sovereign, p. 332 (v) 
 attempt to evade may not be a contempt, p. 333 (z) 
 notice of order for, is sufficient without service, p. 333 (y). 
 
 Injunction — Validity of Patent — Uninterrupted Enjoyment — 
 admission of plaintiff's title, pp. 336 (i), 338 {v), 350 (a) 
 , effect of delay in establishing legal title, p. 337 {p) 
 as between late partners, p. 338 (s) 
 validity considered on motion for interim, p. 342 (J) 
 active user, pp. 340 (b), 343 (s) 
 where injury to defendant irreparable, p. 337 (r) 
 against foreigners in England, p. 340 (6) 
 considerations of national policy, p. 340 (J) 
 . pending appeal or motion for new trial, pp. 335 (/), 337 (ra), 338 («■), 
 340 (a), (c), 343 {p), 381 (c) 
 to restrain sale of old as improved machines, refused, p. 343 (j) 
 rule that title must be established at law no longer applies, p. 344 (f) 
 .user for three years not sufficient, p. 344 (u) 
 user for ten years may be sufficient, p. 344 (v) 
 although patent may be invalid, p. 344 (f). 
 
 Injunction — Infringement — 
 admission of, p. 345 (5) 
 prima facie case of, p. 345 (c), (d) 
 what evidence of, necessary, p. 345 (d) 
 by sale, plaintiff must prove article not made by himself or his agents, 
 
 p. 346 (e) 
 party selling article used by others for, restrained, pp. 154 (c), 165 (a), 
 
 345 (a) 
 discontinued user is not sufficient, p. 346 {g). 
 
 Injunction — Belay and Acquiescence — 
 saved by notice, p. 346 {%) 
 not excused by pendency of action, p, 348 (m) 
 omission to proceed by scire facias, p. 348 (m) 
 plaintiff, if called, should be cross-examined as to, p. 348 (jp) 
 excused because infringing company had not a substantial capital, 
 p. 349 (t). 
 
 Injunction — Expired Patents — 
 sale of articles after expiration of term restrained if manufactured 
 
 before expiration, p. 349 («), (w) 
 account for previous infringement of, pp. 349 {w), 371 (m) 
 motion to commit for breach of injunction restraining infringement of, 
 
 p. 350 (x). 
 
PEACTICE. 288 
 
 Injunction — Order for, 
 
 form of, pp. 351 (c), 352 (/) 
 
 construction of, pp. 352 (/), {U), 333 (z) 
 Venue — 
 
 motion to change, p. 353 (i), (J) 
 
 in case of infringement by posting from Scotland, p. 353 (Jc) 
 
 charge to assize town when convenient, p. 353 (»i). 
 
 Postponement of Trial, p. 353. 
 
 Trial of Questions of Law and Fact — 
 under old and new practice, p. 355 (a;) 
 
 issue granted as to novelty, but refused as to utility and specification, 
 p. 355 (w) 
 
 novelty of invention and manufacture, p. 354 (^) 
 variance between complete and provisional specification, 
 p. 354 (r) 
 will not be granted if opposed by plaintiff, p. 356 (z) 
 may be granted before liearing, p. 356 (a) 
 separate issues not peremptory, p. 354 (<) 
 new issues not suggested by answer, p. 355 (v) 
 evidence, p. 305 (u) 
 
 when directed to take place at assizes, pp. 353 (m), 354 (s) 
 question of construction not to be argued first, p. 356 (V). 
 
 Jury — 
 none, unless directed by Court, sect. 28, p. 65 
 granted where either party require it, p. 357 (d), (e) 
 certifying for special, p. 356 (c) 
 whether inquiry as to damages can be referred to, p. 357 (i). 
 
 Affidavits — 
 
 rules as to swearing, Patent Eules, 1890, 17 and 17a., p. 358 
 on application for injunction, p. 358 {j), (A;), (I) 
 must stt forth plaintiff's legal title, p. 360 (s), (y), (w) 
 
 belief that he is the original inventor, p. 358 (j) 
 belief that invention is new, pp. 358 (t), 360 (s) 
 nature of infringement with particularity, p. 358 Q') 
 dispensed with where patentee dead, p. 359 (n) 
 variation of from bill, p. 359 (o) 
 
 postponement of trial, for filing of, pp. 359 (q), 360 (■;;), (w) 
 cannot be read if filed after hearing begun, p. 859 (j) 
 sufficiency of, pp. 358 Q'), 360 (s) 
 as to manufacture of article, p. 360 (x) 
 by assignee, p. 360 (s). 
 
 Evidence of Subject-matter of Patent — 
 for improvement, p. 361 (z) 
 specification, where conclusive of, pp. 361 (as), 364 {p), (s). 
 
 Evidence of Novelty of Invention — 
 plaintiff must make out prima facie case of, pp. 361 (a), 362 (/), 364 (m) 
 may be by negative evidence, pp. 361 (c), 362 (/) 
 
 allegation of grant and production of patent, pp. 291 {h), 363 Q) 
 comparison of specifications, pp. 362 (g), 487, 488, 489 
 how affected by development of the trade, p. 363 (i) 
 refreshing memory of witness by drawing, p. 362 (d) 
 statement of prior user who is dead, admissibility of, p. 362 Qi). 
 
 Evidence of the Grant of Letters Patent — 
 patent, prima facie evidence of, p. 363 (k), (m). 
 
284 PEACTICE. 
 
 Evidence of sufficiency of Specification — 
 
 plaintiff must make out prima, facie case of, p. 364 (n) 
 where not clear to ordinary workman, p. 364 (p) 
 experiments in support of, p. 365 (t) 
 by experts, p. 442 (c). 
 
 Evidence of Infringement — 
 similarity of manufactured article, pp. 365 (u), 366 («) 
 
 coupled with possession of necessary machinery, p. 365 (v) 
 in considering, patent assumed to be valid, p. 365 (lu) 
 by experts, p. 366 (a), (i^) 
 by manufacture abroad, pp. 171 (a), 366 (6) 
 by alleged secret process heard in camera, p. 366 (c). 
 
 Evidence of Documents in Patent Office — 
 
 copies certified and sealed to be admitted as. Patents Act, 1883, s. 89, p. 75. 
 
 Account of Sales and Profits' — • 
 jurisdiction of court to order, Patents Act, 1883, sect. 30, p. 367 
 plaintiff not entitled to, in addition to damages, pp. 368 (J), 369 (ra), 375 (m) 
 discretionary with court to direct account, or to leave parties to their 
 
 remedy at law, pp. 369 (m"), (ra), 373 (g), 374 (h) 
 between joint owners, pp. 369 (m^), 370 (o), (p), 372 (z) 
 where defendant has sold for no profit, p. 367 (g) 
 
 where defendant, having infringed through ignorance, submits, p. 870 (s) 
 offer to keep, no answer to motion for injunction, p. 371 (f) 
 under licence, p. 367 (h) 
 
 as between patentee and manufacturer, p. 371 (v) 
 from infringement of patent expired at the hearing, pp. 349 (w), 371 (a) 
 of profits before action, pp. 368 (k), 369 (I) 
 where defendant trustee to plaintiff for, pp. 368 (k), 372 (6) 
 where ordered before verdict, p. 369 (I) 
 granted as soon as verdict given, p. 371 (w) 
 not delayed by appeal, p. 371 (vi) 
 
 to assignee only from date of registration of assignment, p. 370 (f) 
 of defendant's profits not plaintiff's loss, pp. 331 (q), 370 (r) 
 may be proved for in bankruptcy, p. 372 (6) 
 none where clearly no profits have been made, p. 372 (2) 
 assignee of share is entitled to, p. 372 (z) 
 of profits prior to infringement for purpose of comparison, p. 372 (c). 
 
 after failure to pay fees. Patents Act, 1883, sect. 17 (4) (b.), p. 373 
 after amendment has been allowed. Patents Act, 1883, sect. 20, p. 373 
 inquiry into, not granted in addition to account, p. 375 (n), (0) 
 
 refused where bill filed immediately before expiry of patent, 
 p. 375 (m) 
 
 where not specially prayed, p. 375 (J) 
 
 Ibrm of inquiry, p. 374 (i) 
 royalties received by intringer, a measure of, p. 375 (Je) 
 may be obtained against manufacturer or user, p. 374 (f) 
 but not against both for same machine, p. 375 (k) 
 determination of, where left to jury, pp. 374 (h), 376 (q) 
 jurisdiction to award, relates back to time of filing bill, p. 374 (i) 
 allegation of defendant's inability to answer, relevant on motion for in- 
 junction, pp. 349 (0, 373 (e) 
 include profit rental of articles whether in use or not, p. 376 (p) 
 net profits made by the infringer but which would have been made by 
 
 patentee, pp. 376 (r), 377 (t) 
 power of Palatine Court to grant, p. 377 (s). 
 
PEACTIOE. 285 
 
 New Trial — 
 on motion for, Court of Appeal will not reverse finding on issue of fact, 
 
 p. 378 (jc) 
 and will only consider whether evidence warranted verdict, p. 378 (x) 
 on ground of rejection of evidence, p. 378 (a;) 
 refusal to put questions not on record to jury, no ground for, 
 
 p. 378 (m) 
 nor fresh evidence which might have heen found sooner, p. 379 (z). 
 
 Appeal — 
 
 Appeal to Law Officers — 
 
 cases in which the Patents Act, 1883, gives an, p. 379 
 
 procedure on appeals to law officers, Patents Act, 1883, sect. 38, p. 379 
 
 Eules as to, made by law officers, p. 380. 
 
 Appeal to Court of Appealr— 
 
 hearing evidence on, pp. 381 (h), (d), (e), (/), 382 (f) 
 copy of judge's notes to be furnished on, p. 382 {g) 
 delivering up infringing machines pending, p. 381 (a) 
 account not stayed pending, p. 381 (c) 
 fresh evidence must be not merely affidavits, p. 381 (b). 
 
 Judgment on the Pleadings — 
 enquiry limited to admitted instances of infringement, p. 382 (i). 
 
 Costs — 
 general, of cause, pp. 383 (l), 392 (z) 
 
 of issues, pp. 383 (0, 390 (p), 391 (q), (s), (v), 392 (w), (a), 394 (k) 
 of notice of objections, pp. 384 (s), 395 (y) 
 before trial, p. 385 (w) 
 triple, pp. 383 (to), 384 (p) 
 
 certificate " that validity of patent came in question," Patents Act, 1883, 
 sect. 31,, p. 382 
 
 where given, p. 383 (k) 
 
 must be put in evidence, p. 385 (v) 
 
 after completion of trial, pp. 383 (m), 384 (p) 
 
 not a " usual certificate," p. 385 (v) 
 
 whether granted where judgment goes by default, pp. 383 (n), 
 
 389 (g^), 390 (to), 391 («) 
 where validity not disputed in subsequent suit, p. 386 (z) 
 applicable only to subsequent suit, p. 387 (b) 
 could not be given by Palatine Court, p. 392 (y) 
 is not a judgment or order so as to be appealable, p. 393 (^r) 
 granted in an action tcrestiain threats, p. 393 (/) 
 does not apply to action already commenced, p. 394 (r) 
 will not be granted a second time as to same patent, p. 394 (p) 
 certificate that breaches had been proved. Patents Act, 1883, sect. 29 (6), 
 p. 294 
 not given where patent was void, p. 389 (») 
 certificate that particulars of objections were reasonable and proper. 
 Patents Act, 1883, sect. 29, p. 299 
 Court of Appeal has power to grant, p. 393 (s) 
 not granted on a petition for revocation, p. 394 (I) 
 limited to those particulars which were put in cross-examination of 
 
 plaintifi', p. 393 (d) 
 does not include those which defendant has had no opportunity to 
 
 prove, p. 393 (e) 
 unless defendant's counsel states that he was prepared to prove 
 them, p. 317 (p) 
 
286 PEACTICE: 
 
 wliere only two out of many anticipations are proved, p. 317 (o) 
 court will not hear objections for mere purpose of granting, p. 318 (j) 
 
 of injunction, pp. 384 (w), (o), {t), 389 (/c) 
 
 where nominal damages only recovered, pp. 163 (/'), 383 (m) 
 
 judge cannot certify for, after taxation, p. 383 (m) 
 
 of special jury, pp. 384 (s), 385 («;) 
 
 of rule for account of profits, p. 386 (y) 
 
 of re-amending notice of objections, p. 387 (c) 
 
 of counsel, pp. 384 (<), 387 {d), 388 (/) 
 
 of appeal, pp. 387 (e), 390 (I) 
 
 of perusing afSdavits, p. 387 (d) 
 
 where defendant submits, pp. 387 (a), 390 (ra) 
 
 against directors of company personally, p. 386 (x) 
 
 security for, pp. 384 (f), 385 («) 
 
 necessary that judge should certify for, p. 384 (j) 
 
 of drawings of exhibits, p. 388 (/) 
 
 of scientific witnesses, p. 388 (/), (g) 
 
 of models, p. 3S8 {g) 
 
 after amendment of particulars, pp. 305 (cj), (t), 306 (w), (x), 387 (c) 
 
 of issue of infringement when patent invalid, pp. 390 {p), 391 {q),{y), 393 (J) 
 
 trustees of bankrupt defending are liable for, p. 389 (J) 
 
 of appeal, when partially successful, p. 390 (T) 
 
 of inquiry not given until it has been held, pp. 391 (i), 395 (s) 
 
 aliter of inquiry on undertaking as to damfiges, p. 392 (6) 
 
 of issue tried at assizes, p. 395 (u) 
 
 of reference, to be dealt with by referee, p. 395 (t). 
 
 Practice — Parties to the Action. 
 (»•) BouLTON V. Bull. N. P. [1795] 
 
 When a patentee has assigned part of his patent he may join 
 with his assignee in bringing an action. (2 S. Bl. 464.) 
 
 (y) George v. Beaumont. Ch. [1816] 
 
 Damages may be recovered against infringers, not only by the 
 patentees but also by all v^ho have obtained licences from them. 
 Per Lord Eldon, L.C. (27 Bep. Arts, 2nd Series, 262.) 
 
 (k) Bloxam v. Elsee. [1827] 
 
 The assignees of a bankrupt patentee may maintain an action 
 for infringement of a patent. (6 B. & G. 169.) 
 
 (Z) Deeosne v. Faieie. N. P. [1835] 
 
 Per Abinger, C.B. : A mere licenj^ee can maintain no action for 
 the infringement of the patent fcr which he has a licence. (1 Web. 
 
 P. a 166.) 
 
 (m) Westhead v. Keene. [1838] 
 
 Where a company had been formed for the purchase of the 
 plaintiff's patent, and no written contract had been signed, and 
 no assignment had been executed by the plaintiff, but the com- 
 pany claimed some equitable interest in the patent, a demurrer to 
 a bill, to which the company had been made defendants, on the 
 ground of misjoinder of parties, was overruled. (1 Beav. 287.) 
 
Parties to the Action. 287 
 
 (w) Ghantee v. Leese. Ex. Ch. [1839] 
 
 , In suing upon an agreement between A., B. and C. of the one 
 part, and D. of the other part, for royalties under an exclusive 
 licence, founded upon a consideration to part of which A., B. and 
 0. were each conducing parties, the action should he brought by 
 all the parties to the agreement of the first part jointly. (1 3. & S. 
 224 ; aSarmed in Ex. Ch., 5 M. d W. 698.) 
 
 (o) Spilsbuky v. Clough. [1842] 
 
 When a patentee assigned a third of his patent to A., and then 
 entered a disclaimer, and subsequently assigned the remaining 
 two-thirds of his patent to B., the two assignees, A. and B. may 
 sue f I ir an infringement committed after the date of the disclaimer. 
 (2 Gale & Dav. 17.) 
 
 (p) Electric Teleseaph Company v. Beett. [1851] 
 
 The assignees of a patent may maintain an action for infringe- 
 ment. (10 a B. 838.) 
 
 (2) Caldwell v. Vanvlissengen. Ch. [1851] 
 
 Foreigners coming into this country are subject to actions for 
 injuries done by their infringing on the sole and exclusive right 
 granted by the Crown to patentees of inventions, in conformity 
 with the law and constitution of this country. (9 Hare, 416.) 
 
 (r) Denlby v. Bloee. N. p. [1851] 
 
 The person physically using a patented invention, and not the 
 person giving instructions and plans which include its usi, is the 
 party to be sued for an infringement; the oontraotor, for instance, 
 and not the architect, in the case of a contrivance employed in 
 house-building. (38 Lon. Jour. 224.) 
 
 (s) Smith v. The London & Noeth Westeen Eailway Company. 
 [1853] 
 Where A. and B. are tenants in common of a patent assigned to 
 them, if B. dies, actions for infringements committed in B.'s 
 lifetime survive to A., who is entitled at law to recover the whole 
 damages. (2 Ell. <£ £. 69 ; 17 Jur. 1071.) 
 
 («) Dunnicliff v. Mallett. [1859] 
 
 It is competent to the assignee of a separate and distinct por- 
 tion of a patent to sue for an infringement of that part, without 
 joining one who hus an interest in another part, — the damages to 
 be recovered in the action accruing to the former alone. (7 G. B., 
 N. S. 209 ; 6 Jur., N. S. 252 ; 29 L. J., C. P. 70 ; 8 W. B. 260.) 
 
 Erie, C.J., in delivering judgment, said : " The question is, 
 whether an assignment of part of a patent is valid. I incline to 
 think that it is. It is every day's practice, for the sake of economy, 
 to include in one patent several things which are in their nature 
 perfectly distinct and severable. It is also every day's practice 
 by disclaimer to get rid of part of a patent which turns out to be 
 old. Being, therefore, inclined to think that a patent severable in 
 its nature may be severed by the assignment of a part, I see no 
 
288 PEACTICE: 
 
 reason for holding that the assignee of a separate part which is the 
 subject of infringement may not maintain au action. (7 G. B., 
 N. 8. 227.) 
 
 (<) Datehpoet v. Eichaeds. [1860] 
 
 Where one only of several joint-owners of a patent, amongst 
 whom any damages recovered would be divisible is made the 
 plaintiff, the bill, if not demurred to, is sufficient. (3 L. T. Bep., 
 N. S. 503.) 
 
 (m) Walton v. Lavatee. [1860] 
 
 The assignee of a patent may maintain an action for an infringe- 
 ment, even though he has acquired the right by assignment of 
 two separate moieties, and the party sued is the original grantee. 
 (8 a B., N. S. 162 ; 29 L. J., C. P. 275 ; 6 Jur., N. S. 1251 ; 
 3 L. T. Bep., N. S. 272.) 
 
 (v) Betts v. Neilson. [1865] 
 
 Where the principals of a firm, which had infringed a patent, 
 were out of the jurisdiction, and not amenable to the process of 
 the court, the court restrained the managers who, though out of 
 the jurisdiction, had appeared to the bill. (6 N. B. 221.) 
 
 (w) Eenaed v. Levinstein. Ch. [1865] 
 
 An exclusive licensee of a patent has a right to use the name of 
 the patentee in an action for infringement. (2 H. & M. 628.) 
 
 {x) Betts v. De Yitee. Ch. [1868] 
 
 The directors of a company are personally responsible for the 
 infringement of a patent by their workmen, notwithstanding such 
 infringement may be in contravention of orders. (L. Bep., 3 Gh. 
 441 ; 37 L. J., Ch. 325 ; 16 W. B. 529.) 
 
 (jf) Hassall v. Wmght. [1870] 
 
 The assignee of a patent may maintain a suit against the 
 assignor, and subsequent licensees from the assignor with notice of 
 the assignment, to restrain them from using the patent, although 
 at the time of the institution of the suit the assignment has not 
 been registered. Semhle, that registration of the assignment of a 
 patent relates back to the date of the assignment, so as to entitle 
 the assignee to maintain a suit to restrain an infringement insti- 
 tuted between the dates of the assignment and the registration. 
 (L. B., 10 Eq.50Q; 18 W. B. 821.) 
 
 (z) Adams v. Noeth British Eailway Company. [1873] 
 
 A general agent of the patentees of an American invention 
 agreed with the plaintiff, that the plaintiff was to have the sole 
 agency and control of the working of the patent in England upon 
 certain terms, including a share of royalties and profits : — Held, 
 that the plaintiff was a mere agent for the sale of the invention, 
 and was in no such position as gave him the right to file a bill, 
 
Parties to the Action. 289 
 
 wliioh was in the form of a patentee's bill for infringement. (29 
 L. T. Bep., N. S., 367.) 
 
 (a) Sheehan v. Great Eastern Eailway Company. [1880] 
 
 One of several co-owners of a patent has a right to sue alone for 
 the recovery of profits due for the use of the patent. An objection, 
 by a defendant, that other persons should have been joined as 
 plaintiifs, should be made promptly, and not postponed to the 
 hearing, vrhen no impediment exists to raising the objection at 
 once. (16 Ch. D. 59.) 
 
 (6) Briggs v. Lardeue. [1884] 
 
 In a defence to an action for infringement, the defendants 
 alleged that they had, since action brought, sold their business to 
 a company, and obtained an order at Chambers to add the company 
 as defendants. On appeal, to Pearson, J., the order was dis- 
 charged. (Oriff. 65; 2 0. B. 13.) 
 
 (c) Edison and Swan v. Holland and the Jablockhoff Company. 
 
 [1886] 
 
 In an action for infringement of a patent for incandescent 
 lamps, the defendants, having shown that the lamps in question 
 had been supplied by the Brush Company, and that, after action 
 commenced, the Jablocthoff Company had obtained an indemnity 
 from the Brush Company, applied for leave to issue a third party 
 notice to the Brush Company : — Held, by Bacon, V.-C, that, the 
 notice should issue ; and, on an application by the Jablockhoff 
 Company for directions. Held, by Kay, J., that the Brush Company, 
 admitting their liability to indemnify, shuuld have liberty to 
 appear at the trial, and should be bound by the decision of the 
 Court on any question as to the indemnity arising between them 
 and the defendants, but no further. (3 0. B. 395.) 
 
 Held, subsequently, that as the third parties had not been made 
 defendants, nor put on terms to submit to any judgment, excepting 
 as stated above, the Court had no power to grant an injunction 
 against them ; but, that as they had appeared on the appeal, there 
 w^as power to make them pay the costs of the appeal. (6 0. B. 
 243.) 
 
 (d) Washburn and Moen Manufactoeing Company v. Ounard 
 
 Steamshxi' Company, and Paekes and Sons. [1889] 
 The plaintiffs, who are patentees, commenced an action against 
 the Cunard Line, to restrain them from dealing with goods in 
 their possession at Liverpool, which were alleged to be infringe- 
 ments of the plaintiffs' patent. The Cunard Company stated, that 
 they were carriers of the goods to Liverpool, under a bill of lading, 
 to the order of Parkes and Sons, of Dublin. Leave was then given 
 to add Parkes and Sons as defendants, and to serve them out of the 
 jurisdiction ; and this having been done, Parkes ami Sons moved 
 to set aside the service : — Hold, by Stirling, J., that, the action was 
 properly brought against -the Cunard Company ; that if Parkes 
 and Sons had been within the jurisdiction, they as consignees, and 
 
 u 
 
290 PEACTICE : 
 
 fas it turned out) owners, would have been properly added as 
 defendants; and that it followed, that they were parties who 
 might he served out of the jurisdiction. (6 6. B. 398.) 
 
 (e) Van Gelder, Apsimon and Company v. Soweeby Bridge United 
 
 District Tloue Society. C. A. [1890] 
 
 In an action by assignees of a patent, for an injunction and 
 damages for infringement, the defendants took a preliminary 
 objection, that the plaintiffs were not the legal owners of the 
 patent, as they had assigned the patent to mortgagees by a deed 
 duly registered, which gave power to license the use of, or sell 
 the patent, after the mortgagors had made default: — Meld, by 
 Kekewich, J., that the mortgagors alone could not maintain the 
 action, and, that unless they paid the costs thrown away, and got 
 the mortgagees' consent to be joined as co-plaintiffs, the action 
 must be dismissed. (6 T. L. B. 150; 59 L. J. 292; 7 0. B. 41.) 
 Held, by the Court of Appeal, that this judgment must be reversed 
 and that the mortgagor was entitled to sue alone. Liberty was 
 reserved to the defendants to apply to the Court below to have 
 the mortgagees made co-defendants, in case it should appear that 
 the defendants would be subject to any danger from their absence. 
 (W. N. 1890, p. 109 ; 7 O.B. 208.) 
 
 Practice — Pleading. 
 
 (f) Kay v. Marshall. [1836] 
 
 It is sufficient for the plaintiff to state on the face of the bill that 
 he has done all that^is required by the patent, and it is unnecessary 
 for him to set out the specification. (2 Weh. P. (7. 39 ; 1 M.& G. 
 373.) 
 
 {g) Kay v. Marshall. M. E. [1836] 
 
 Motion for leave to file a double plea. The bill was filed to 
 restrain the infringement of the plaintiff's patent. The defendants 
 disputed the validity of the patent on the grounds that so far as 
 the invention was new it was useless, and that so far as it was 
 useful it was not new. Leave granted. (1 Eeene, 190.) 
 
 (F) Westhead v. Keene. [1838] 
 
 A bill filed by a patentee, to restrain the piracy of his patent 
 and for an account, did not distinctly state the specification, or 
 explain the nature of the invention for which the patent right was 
 claimed. The Court (not without some doubt) Seld, on the 
 authority of Kay v. Marshall, that the bill was not demurrable. 
 (1 Beav. 287 ; 2 Web. P. G. 36 («.).) 
 
 (i) Curtis v. Cotts. [1839] 
 
 Where a bill is filed to restrain the infringement by the defendant 
 of letters patent, a sufficient case to justify the injunction must be 
 stated by the plaintiff on the face of the bill, and he must not 
 depend solely on the admissions contained in the defendant's 
 answer for the granting or continuing of the injunction. If the 
 
Pleading. 291 
 
 answer deny th.e invention to be new, and also the enjoyment 
 under tlie letters patent, and state (as is the fact) that the specifica- 
 tion is imperfectly set forth in the bill, the Court will dissolve an 
 injunction previously obtained, on affidavit, giving the plaintiff 
 liberty to bring an action, although the defendant admits by his 
 answer that he has made machines upon the principle comprised 
 in the letters patent. (8 L. J., Gh. 184.) 
 
 (i) Young v. White. [1853] 
 
 The fact that a medal has been granted to the plaintiff as the 
 inventor, is not admissible in evidence on the plea that he is not 
 the true and first inventor. (23 L. J., Ch. 190.) 
 
 (j) Saeazin v. Hamel. [1863] 
 
 Whether, under a bill to restrain the infringement of a patent, 
 it was necessary to allege that the patentee had duly paid the 
 instalments of stamp duties necessary to keep the patent alive, 
 under the 16 & 17 Vict. c. 5, s. 2, qusere. (32 Beav. 145.) 
 
 (k) Amoky v. Brown. [1869] 
 
 In a bill to restrain an infringement of a patent, an express 
 averment of the novelty of the invention protected by the patent 
 is not necessary. (L. B., 8 Bq. 663 ; 38 L. J., Ch. 593.) 
 
 Sir W. M. James, V.-C, said : " I was at first struck at the 
 absence of an averment as to the novelty of the invention, and I 
 doubted whether such an averment was not necessary to support a 
 bill in restraint of an infringement of a patent. But on looking 
 at the form of a declaration at law for damages for the infringe- 
 ment, I find that it contains no allegation of the novelty of the 
 invention. The allegation of the grant and production of the 
 letters patent throws upon the defendant the onus of disputing the 
 novelty, and therefore I think the bill sufficient without it." 
 (8 L. B. Bq. 664.) 
 
 (l) HOLSTE V. EOBEETSON. 0. A. [1876] 
 
 The Court wiU at any time during the progress of a patent suit 
 allow the defendant to raise a fresh issue on the discovery of facts 
 which could not with due diligence have been discovered before. 
 (L. B., 4 Gh. D. 9.) 
 
 (m) LiARDET V. Hammond Electric Light Company. C. A. [1883] 
 
 The plaintiifs had entered into an agreement with the defendant 
 company to sell certain electrical patents to them upon terms, one 
 of which was that the purchasers should be bound to keep the 
 manufacture of the accumulators to which one of the patents 
 related in their own power, and should themselves manufacture 
 the same. In an action for specific performance of the agreement 
 and damages the defendants pleaded that it was an implied term 
 of the agreement that the patents, and more especially the patent 
 as to the accumulators of which the defendants were bound to 
 keep the manufacture in. their own power, should be good and 
 valid, and that they were not good or valid : — BeM, by the Court 
 
 u 2 
 
292 PEACTICE : 
 
 of Appeal, that there was no implied warrantj' in the agreement, 
 that the patents were valid, and that the plea must be struck out 
 as embarrassing. (31 W. B. 710.) 
 
 (n) United Telephone Company v. Mottishead. [1886] 
 
 The defendants denied the validity of the patent and denied 
 infringement, and moved for an order that the issue as to infringe- 
 ment be tried first. Kay, J., said that unless the defendants 
 admitted the validity of the patent this could not be done. (Griff. 
 230 -,3 0.11. 213.) 
 
 (o) Edison Electric Light Company v. Shippey. [1887] 
 
 The defendant by his statement of defence had admitted the 
 plaintiffs' title and the validity of the respective patents, but 
 denied infringement. At the trial the defendant, who appeared in 
 person, applied for leave to amend his defence by putting in issue 
 the validity of one of the patents and the title of the plaintiffs 
 thereto. Leave refused. (4 0. B. 471.) 
 
 (p) United Telephone Company v. Taskee. [1888] 
 
 In 1884 the plaintiffs brought an action against the defendants 
 for infringement, but in consequence of evidence given on behalf 
 of the defendants on interlocutory proceedings discontinued it. In 
 1888 the plaintiffs issued a writ for the same object. The state- 
 ment of claim in this new action contained an allegation that 
 since discontinuing the former action the plaintiffs had found that 
 the defendant's evidence, which led to its disconiinuance, was 
 false, and in a subsequent paragraph a claim, not on the writ, that 
 this action might be treated as supplemental to the previous 
 action. Both these paragraphs were ordered to be struck out. 
 (W. N. 1888, 222.) 
 
 (g) Badische Anilin und Soda Fabrik v. Dawson. [1889] 
 
 In an action for infringement the defendant set up in his 
 defence that colouring matter stated to be an infringement was 
 purchased from persons with whom the plaintiffs have agreed not 
 to take proceedings in respect of the said goods. It was proved 
 that the defendant sold the product in question : — Seld, that the 
 onus was on him to prove this plea, and as he called no witnesses 
 judgment was given agaiost him. (6 0. B. 387.) 
 
 (r) Philips v. The Ivel Cycle Company. [1890] 
 
 Kekewich, J. (referring to the distinction drawn in Eolliday v.. 
 Heppenstall between evidence to prove anticipation and evidence 
 to prove prior common knowledge) : " It would probably be 
 necessary for those who draw pleadings and particulars of objec- 
 tion, which are part of the pleadings in patent cases, to consider 
 whether some improvement of the common form is not now 
 required. The common form, which is adopted in these oases, is 
 to deny novelty — i.e., to allege in the particulars of objection 
 that the said alleged invention was not new at the date of the 
 said patent. It occurs to me that that has hitherto been under- 
 
Consolidation of Actions. 293 
 
 stood as being very little more than, introductory to what 
 invariably follows : some statement of the different publications 
 which are relied upon as anticipation. I think there are some 
 words to be found in the case to which I have i eferred supporting 
 the notion, and certainly it is a notion to my mind well founded, 
 that if the defendant intends to depend for resistance to the 
 plaintift's claim upon common knowledge as distinguished from 
 anticipation, it will be found convenient, if not necessary, to plead 
 that distinctly." (7 0. E. 77, at p. 82.) 
 
 Every effort should be made in a patent action to confine the 
 pleadings to the real points at issue. Accordingly where the 
 defendants had denied infringement with the view of compelling 
 the plaintiff to explain how they had infringed, they were not 
 allowed any costs of that issue. (lb. 85.) 
 
 (s) Law v. Ashworth. [1890] 
 
 In an action to restrain threats made by patentees, the plaintiffs 
 in their statement of claim alleged the invalidity of the defen- 
 dants' patent, and delivered paitioulars of objection. The defen- 
 dants applied before putting in their defence for further and 
 better particulars (a) of the alleged threats ; (6) of the objections 
 to the patent : — Held (a) that they were entitled before defence to 
 particulars of the alleged threats, but not to the names of cus- 
 tomers whom the plaintiffs had in consequence thereof promised 
 to indemnify ; (6) that the patent being for a machine, the par- 
 ticular machine or part of a machine alleged to be an anticipation 
 must be pointed out. (7 0. B. 86.) 
 
 (gi) MacDougall Brothers v. Partington. C. A. [1890] 
 
 In an action on a contract relating to a patent the plaintiff 
 limited his claim to relief in respect of that contract, but the 
 defendant included in his pleas the ordinary defences to an action 
 for infringement : — Held, that the latter must be struck out as 
 embarrassing. (7 0. B. 216.) 
 
 Practice — Consolidation of Actions, 
 (f) DiLLY V. DoiG. [1794] 
 
 Loughborough, L.C. : "I do not remember any case upon 
 patent rights, in which a number of people have been brought 
 before the Court as parties, acting all separately upon distinct 
 grounds; it has always been against a particular defendant." 
 (2 Yes. jun. 487.) 
 
 (u) FoxwELL V. Webster. [1863] 
 
 One hundred and thirty-four suits were instituted against as 
 many defendants by a patentee for infringement of his patent, and 
 interrogatories were served. Seventy-seven defendants, combining 
 together amongst themselves so as to make four bodies in all, 
 moved, before putting in any answer, that the plaintiff might be 
 directed to proceed with one suit only until it should have been 
 determined, or until the validity of the patent should have been 
 
294 PKACTICE : 
 
 finally determined, or until further order ; and that the proceed- 
 ings in the other suits might in the meantime be stayed, or that 
 the time for answering and producing documents might be 
 enlarged, the moving defendants undertaking to be bound by the 
 result of the selected suit so far as the question of the validity of 
 the patent was concerned. The Court, upon terms, and the 
 plaintiff not opposing, made an order with a view of trying before 
 itself the question of validity in the first instance, before entering 
 upon the question of infringement. (4 De G., J. & 8. 77.) 
 
 (v) BoviLL V. Crate. [1865] 
 
 Wood, V.-C. : " After getting information of case after case of 
 infringement, the plaintiff might select that which he thought the 
 best in order to try the question fairly, and proceed in that case 
 to obtain his interlocutory injunction. He might write at the 
 same time to all the others who were in simili casu, and say to 
 them : ' Are you willing to take this as a notice to you that the 
 present case is to determine yours ? Otherwise I shall proceed 
 against you by way of interlocutory injunction; and if you will 
 not object on the ground of delay, I do not mean to file bills 
 against all of you at once. Am I to understand that you make no 
 objection of that kind ? ' I do not think any Court could complain 
 of a patentee for taking the course I am suggesting." (L. B., 
 1 Eq. 391.) 
 
 (w) Thomas v. Winter. [1867] 
 
 The defendant was one of twenty-six against whom the plaintiff 
 brought separate actions for infringement of the patent of a sewing- 
 machine. A consolidation order was made by consent, and the 
 plaintiff was authorized to select one action for trial, the defendants 
 undertaking to be bound and concluded by the result of that 
 action. Provision was made by the order for security for plaintiff's 
 costs in case of an appeal. In the case selected by the plaintiff 
 the decision both at the trial and in banc were in favour of the 
 plaintiff, and the defendant neglected to prosecute an appeal to 
 the Exchequer Chamber : — Seld, upon application by the present 
 defendant, who was not in the action tried, to be allowed to carry 
 the case decided to a superior Court, — that the fact of the neglect 
 to appeal was not sufficient ground for the Court's exercising its 
 equitable jurisdiction, in amending or revoking the consolidation 
 order. (17 L. T. Rep., N. S., 148.) 
 
 Practice — Particulars of Breaches. 
 
 Patents Act, 1883, sect. 29 (1). In an action for infringement of a 
 patent the plaintiff must deliver with his statement of claim, or by order of 
 the Court or the Judge, at any subsequent time, particulars of the breaches 
 complained of. 
 
 Sub-seot. [6]. On taxation of costs regard shall be had to the particulars 
 delivered by the plaintiff and by the defendant ; and they respectively shall 
 not be allowed any costs in respect of any particular delivered by them unless 
 the same is certified by the Court or a Judge to have been proven or to have 
 been reasonable and proper, without regard to the general costs of the case. 
 
 [For the remaining sub-sections, see p. 299.] 
 
Particulars of Breaches. 295 
 
 (x) Peliey v. Mitchell. [1840] 
 
 The Court has power, irrespective of any statute to that effect, 
 to order the plaintiff, in an action for the infringement of a patent, 
 to deliver particulars in writing of the infringements on which it 
 is intended to rely. (1 Web. P. G. 269.) 
 
 Patent for the manufacture of improved pens. The specification 
 described thirteen different kinds of improvements, referring to 
 them by numbers. The Court ordered the plaintiff to give the 
 defendant particulars by the number of the pen on which infringe- 
 ments were alleged, (lb.) 
 
 (jj) The Electeic Telegraph Company v. Nott. [1847] 
 
 In an action for infringing a patent, the Court has a general 
 power to order a particular of the alleged infringement. But, 
 wheie the specification claimed a combination of numerous im- 
 provements (ia electric telegraphs), the Court refused to compel 
 the plaintiffs to give the defendants such pai'ticulars, conceiving 
 that from the nature of the patent, the plaintiffs would be thereby 
 put to great difficulty and embarrassment, and that, under the 
 circumstances (the matter having been debated in Chancery upon 
 a motion for an injunction), the defendants must be taken to 
 possess adequate information upon the subject. (4 C. J3. 462 ; 
 16 L. J., a p. 174.) 
 
 (z) Talbot v. La Eoche. [1854] 
 
 In an action for infringement of a patent for "improvements 
 in obtaining pictures or representations of objects," the court 
 refused to compel the plaintiff in his particulars of breaches to 
 specify particularly the persons and occasions, or the particular 
 parts of the specification alleged to have been infringed, although 
 the declaration merely averred an infringement in general terms. 
 (15 G. B. 310 ; 2G.L. Bep. 836.) 
 
 Jervis, C.J. : " If the two processes described in the specification 
 are wholly distinct from each other, and the defendant's process 
 may be an infringement of the one and not of the other, he ought 
 to have better particulars. But, if the whole is substantially 
 one process, he is not entitled to them. . . . We must not 
 make the particulars more complicated than the specification." 
 (Ih. 320.) 
 
 (a) Jones v. Lees. [1856] 
 
 In an action by a patentee against his licensee on a covenant to 
 pay for roving machines made with the plaintiff's invention, and 
 to make none without, — breach, first, in not paying for roving 
 machines made with the invention; and, secondly, in making 
 machines without it ; the defendant having, in answer to inter- 
 rogatories, admitted the making of many hundreds of roving 
 machines, but not with the plaintiff's invention, and having 
 declared that he could not state to whom they were sold, 
 nor give any further information about them, without disclosing 
 
296 PEACTICE : 
 
 his own evidence; and tlie plaintiff claiming in respect of all 
 tlie macliines the defendant had made, under one or other of the 
 covenants, and asserting that he had seeti some of thorn which 
 had his invention applied : — Held, that the defendant was entitled 
 to such particulars as should describe those portions of the 
 machines to which the plaintiff contended that his invention had 
 been applied, so as to enable the defendant to understand, as far 
 as possible, the nature of the machines as to which he was to be 
 charged under either of the covenants, and that it was no answer 
 to the application for such particulars that the defendant's answer 
 to the interrogatories was insufBcient to enable the plaintiff to 
 furnish the particulars, for if the answers were insufficient, they 
 should have been objected to. (25 L. J., Exch. 241.) 
 
 (b) The Patent Type Founding Company v. Eichards. [1860] 
 
 Upon an order for the delivery of further particulars of 
 breaches, the plaintiffs enumerated certain instances, and added, 
 " and the plaintiffs state these particular instances by way of 
 example only, and not so as to preclude them from proving any of 
 the infringements mentioned in the former particulars of 
 breaches : " — Held, that this clause should be struck out of the 
 particulars. (2 L. T. Bep., N. S. 359.) 
 
 (c) Needham v. Oxley. Ch. [1863] 
 
 Particulars of breaches delivered with view to a jury trial of a 
 patent case in this Court are sufficient, if, taken together with the 
 pleadings, they give the defendant full and fair notice of the case 
 to be made against him. (1 H. & M. 248.) 
 
 Sir W. Page Wood, Y.-C., said : " The object of having these 
 particulars delivered is to give the defendant fair notice of what 
 the complaint against him is, not to tie the plaintiffs down to the 
 precifie terms of any verbal definition, or to make the trial of the 
 issue turn upon a point of form." (Zb. 51.) 
 
 (d) Curtis v. Platt. H. L. [1866] 
 
 The plaintiffs are bound by the particulars of breaches delivered. 
 (35 L. J., Ch. 852.) 
 
 (e) Wren v. Wwld. [1869] 
 
 The plaintiffs carried on the business of machine makers, and in 
 their business sold machines to certain persons. The defendant 
 wrote letters and made verbal statements to such persons, alleging 
 that the machines so sold were infringements of a patent which he 
 had obtained for such machines, and making claims in respect of 
 such alleged infringement and the use of the machines. 
 
 An action having been brought by the plaintiffs in respect of 
 the injury caused by these letters and statements, the defendant 
 pleaded not guilty. 
 
 The Court ordered him to deliver particulars to the plaintiffs, 
 showing in what part or parts the machines of the plaintiffs 
 mentioned in the declaration were an infringement of the 
 
Particulars of Sreaohes. 297 
 
 defendant's patents, and pointing out by reference to line and 
 page of his specifications what part of the inventions therein 
 described he alleged to have been infringed. (L. B, 4 Q. B. 213 ; 
 38 L. J., Q. B. 88 : 20 L. T. Bep. N. S. 277.) 
 
 (/) Batley v. Kynock. [1874] 
 
 Although, upon the trial of questions in a patent suit, the 
 plaintifTs particulars of breaches should give the defendant full, 
 fair and distinct notice of the case intended to be made against 
 him, it is not necessary, in the case of an alleged infringement 
 iif a patent for improvements in a particular article {e.g., cart- 
 ridges), for the particulars to point out the precise portions of 
 the specification alleged to have been infringed when the thing 
 alleged to be an infringement has been made an exhibit. (L. B., 
 19 Eq. 229.) 
 
 (g) PiNNEGAN V. James. [1874] 
 
 The practice in equity ought in patent suits as nearly as pos- 
 sible to conform to the practice at common law, and the plaintiff 
 ought to state the particulars of breaches, either in his bill or in 
 a separate document delivered with it. (L. B., 19 Eq. 72 ; 
 44 L. J. GJi. 185.) 
 
 ((/*) Lamb v. Nottingham Manofactueing Company. [1874] 
 
 The form of order used in this case for delivery of further par- 
 ticulars of breaches is set out. (Seton on Decrees, Ed. 4, p. 349.) 
 
 (7i) Adair v. Yoqng. V.-C. B. [1879] 
 
 Where, in an action to restrain the infringement of a patent, 
 the defendants do not confine themselves to meeting the case 
 opened by the plaintiff, but open and call evidence to prove an 
 entirely different case, the plaintiff is entitled to call evidence in 
 reply ; and, notwithstanding the 41st sect, of 15 & 16 Vict. c. 83, 
 to give instances of infringement not included in his particulars 
 of breaches delivered in the action. (W. N. 1879, p. 8.) 
 
 («■) Sykes v. Howarth. Fry, J. [1879] 
 
 The plaintiff in his particulars of breaches alleged that the 
 defendant had at divers times infringed the patent by the manu- 
 facture, sale and use of the patented machine, and particularly 
 in the cases of S. and S. The defendant having admitted, in 
 answer to interrogatories, manufacture for and sale to H., and the 
 defendant not having applied for amended particulars according 
 to the case of Hull v. Bollard (25 L. J., Ex. 304) -.—Held, that 
 evidence of the tiansactions with H. tendered by the plaintiff must 
 be received. (L. B., 12 Gh. B. 826.) 
 
 Fry, J. : "1 find the case of Hirst is within the literal meaning of 
 the particulars. If I had found that the case of Hirst was likely 
 to create surprise, or likely to introduce any point not raised by 
 Smith's or Shaw's case, I should probably have given an opportunity 
 to the defendant to bring any fresh evidence." (16. 830.) 
 
298 PEACTIOE : 
 
 (/) United Telephone Company v. Harrison, Cox, Walker & Co. 
 [1882] 
 
 Where at tlie trial of an action for infringement, the Court is of 
 opinion that there has been an infringement, but holds on a legal 
 ground that the patent is void, it will not give the plaintiff a 
 certificate under sect. 43 of the Patent Act of 1862, that breaches 
 of the patent by the defendant have been proved. (21 Gli. 
 D. 720 ; 61 L. J. Ch. 705.) 
 
 {¥) Tilghman's Sand Blast Company v. Wright. [1884] 
 
 On a summons for better particulars of breaches, Pearson, J., 
 gave the plaintiffs leave to add general words, as in Talbot v. 
 Laroche, when they gave an exhibit, and said- they did not mean to 
 confine themselves to that ; and that was considered sufficient. 
 The case of the Patent Type Founding Company against Eichards 
 was different, because in that case the defendants were manufac- 
 turers. (Griff. 216 ; 1 0. B. 103.) 
 
 (I) EussELL V. Hatfield. [1885] 
 
 The chief clerk having made an order for better particulars of 
 breaches, the plaintiff appealed, and Pearson, J., said that as the 
 defendant had full knowledge of all his own sales, the application 
 should stand over until he had given the plaintiff discovery, and it 
 being pointed out that the plaintiff had not applied for discovery, 
 the defendant was given liberty to apply. (Griff. 204; 2 
 O. B. 144.) 
 
 (I *) Badische Anilin und Soda Fabrik v. Levinstein. C. A. [1885] 
 Although holding the patent invalid, the Court gave the plain- 
 tiffs the costs occasioned by the issues raised by the particulars 
 of breaches. C29 Ch. D. 418.) 
 
 (m) Ledgaed v. Bull. P. C. [1886] 
 
 The sole object of sect. 34 of the Indian Act, corresponding to 
 sect. 41 of the English Patent Act of 1857, is to give the defendant 
 fair notice of the case he has to meet ; and it is quite immaterial 
 whether the information be given in the plaint or in a separate 
 paper. Under a plea of want of novelty, the Court requires the 
 particulars to condescend upon the particular instances, the 
 matter there not being within the knowledge of the patentee. 
 But I it is otherwise in particulars of breaches, for the defendant 
 must know whether and in what respects he has been guilty of 
 infringement. The plaintiff in this case pointed out a particular 
 kiln, constructed and used by the defendant, and in his plaint 
 referred to his three patents, and indicated in the case of each the 
 distinctive features alleged to have been appropriated by such 
 construction and use. Seld, to be sufficient particulars of 
 breaches. (11 App. G., 648 : sub. nom., Petman v. Bull, 3 O.B. 390.) 
 
 («) United Telephone Company v. Fleming. [1886] 
 The particulars of breaches were so worded as to cover two 
 
Particulars of Objections. 299 
 
 valve telephones, supplied by third parties under a guarantee of 
 indemnity. The third parties submitted that they were perfectly 
 willing to defend these valve telephones, and ultimately the 
 plaintiifs amended their particulars so as to exclude them, and the 
 third parties were discharged from the action. (3 0. B., 268.) 
 
 (o) Elsby v. Botlee. [1886] 
 
 The plaintiff delivered particulars of breaches, alleging that the 
 defendant had infringed by the production in a twist lace machine 
 of lace fabrics in the manner described in the specification, p. 3, 
 1. 22 to p. 9, 1. 39, or in a manner only colourably difi'ering there- 
 from ; and by the use of the improved combination of apparatus 
 therein described, and also in particular by the production in a 
 twist lace machine, of fabric known as double tie Swiss net, in the 
 manner described in the specification, p. 6. 1. 67, to p. 7. 1. 38, 
 or in a manner only colourably differing therefrom. A summons 
 for further and better particulars, or for leave to administer 
 interrogatories, was dismissed. (Griff. 96 ; 10. B. 189.) 
 
 (p) Walter C. Church Engineering Company v. Wilson. (1886) 
 
 The plaintiffs said that theycomplained,"in particular and byway 
 of illustration of the following " specified sales, and an application 
 fur better particulars was dismissed. Grove, J. : "I have seldom 
 got much information from particulars of objections or particulars 
 of breaches." (Oriff. 236 ; 3 0. B. 123, at p, 126.) 
 
 (q) Cheetham v. Oldham. [1888] 
 
 When the invention is not difficult to describe, and the claims 
 in the specification are short and defined, it is enough in the 
 particulars of breaches to refer to the claims alleged to have been 
 infringed, and references by page and line need not be given. 
 C5 0. B. 624.) 
 
 Practice — Particulars of Objections. 
 
 Patents Act, 1883, Sect. 29, Sub-s. (2) The defendant must deliver with his 
 statement of defence, or by order of the Court or a Judge, at any subsequent 
 time, particulars of any objections on which he relies in support thereof. 
 
 (3) If the defendant disputes the validity of the patent, the particulars 
 delivered by him must state on what grounds he disputes it, and if one of 
 those grounds is want of novelty must state the time and place of the 
 previous publication or user alleged by him. 
 
 (4) At the hearing no evidence shall, except by leave of the Court or a 
 Judge, be admitted in proof of any alleged infringement or objection of which 
 particulars are not so delivered. 
 
 (5) Particulars delivered may be from time to time amended, by leave of 
 the Court or a Judge. 
 
 (6) On taxation of costs regard shall be had to the particulars delivered 
 by the plaintiff and by the defendant; and they respectively shall not be 
 allowed any costs in respect of any particular delivered by them unless the 
 same is certified by the Court or a Judge to have been proven or to have been 
 reasonable and proper, without regard to the general costs of the case. 
 
800 PEACTICE : 
 
 Particulars of Objections, generally. 
 
 (»•) BuLNOis V. Mackenzie. [1837] 
 
 In actions for infringing a patent, the notice of objection 
 delivered by tbe defendant under 5 & 6 Will. 4, c. 83, s. 5, is not 
 conclusive at his peril; but the court, under its general jurisdic- 
 tion, may model its proceedings and order a fuller and further 
 notice. The jurisdiction of the Court as to these questions is 
 analogous to that of set off. It is for the Court to decide upon the 
 sufficiency of the notice ; this power is not created by the statute. 
 (1 Web. P. 0. 260 ; 4 Bing. N. G. 127.) 
 
 The notice of objections is meant to afford more specific 
 information than the pleas. (1 Web. P. C. 263.) 
 
 (s) Fisher v. Dewick. [1838] 
 
 Application to the Court for an amended notice of objections. 
 Tindal, C.J., in delivering judgment, said : " The object of the 
 statute (5 & 6 Will. 4, c. 83) was not, indeed, to limit the defence, 
 but to limit the expense to the parties, and more particularly to 
 prevent the patentee from being upset by some unexpected turn 
 of the evidence. Under the fifth section, therefore, it was in- 
 tended that the defendant should give an honest statement of the 
 objections on which he means 1o rely. ... If he (the defendant) 
 would, in the Scotch phrase, condescend upon the parts to which 
 he objects there would be an end to the difficulty." (1 Web. 
 P. a 267.) 
 
 Coltman, J. '■ The defendant is not precluded from bringing for- 
 ward any number of objections, but he must state with precision 
 what they are." 
 
 (t) LosH V. Hague. [1838] 
 
 The defendant had omitted, on pleading, to give to the 
 plaintiff a notice of any objections on which he meant to rely at 
 the trial, and a summons was subsequently taken out before a 
 judge at chambers for leave to deliver such notice nunc pro tvnc. 
 
 This summons being opposed, on the ground that a judge had 
 not the power to grant the application, the word " other " in the 
 section showing conclusively that unless some objections, one at 
 least, had been given in, the authority under the statute could not 
 be exercised, the matter came before the Court. 
 
 Parke, B. : " The Couit has power to grant the defendant leave 
 to plead de novo. Therefore, let the pleas already pleaded be 
 considered as if pleaded de novo, and let the objections be then 
 added, and considered as if delivered along with the pleas." 
 (1 Web. P. a 203 («.).) 
 
 Abinger, C. B., in addressing the jury at the trial at nisi prius, 
 said: ''I never conceived those objections were intended to be 
 urged before the jury ; I thought they were merely to apprise the 
 plaintiff of what he was to be prepared to meet." (1 Web. P. C. 
 203 (»).) 
 
Particulars of Ohjections. '301 
 
 (m) Gillett v. Wilby. N. P. [1839] 
 
 It is not sufficient to state an objection in a notice of objections 
 ■unless tbere be a plea to -which it can be applied. (1 Web. 
 P. a 270.) 
 
 («) Neilson v. Harford. [1841] 
 
 If the objections are not sufficiently specific, the plaintiff's 
 course is to apply to a judge at chambers for an order for the 
 delivery of a more specific notice; but if he omits to do so, he 
 cannot object to the generality of the notice at the trial : the only 
 question then is, whether the notice is sufficiently large to include 
 the objections relied on by the defendant. (8 M. & W. 806 ; 
 1 Web. P. a 331.) 
 
 Parke, B., delivering the jurlgmentof the Court, said : " The Act 
 (5 & 6 Will. 4, c. 88, s. 5) must be construed to mean that a mere 
 copy of the pleas will not be a sufficient compliance with its pro- 
 visions. It was passed after the new rules had required the 
 several defences to be pleaded, and must, therefore, be considered 
 as having intended to give to a plaintiff some additional advantage 
 beyond the information which the record would give him. But 
 that did not mean to say, nor do we think the Common Pleas 
 meant to decide, that it would not be sufficient in some cases to give 
 notice in the terms of the plea itself; the objection may be so 
 completely and so fully expanded on the record, that a mere 
 transcript of the plea itself may be sufficient; in other cases the 
 plea may be so general in its language as to be insufficient as a 
 notice, if transcribed from the plea merely. Each case must 
 depend on its peculiar circumstances." (1 Web. P. C. 370.) 
 
 (w) Walton v. Bateman. N. P. [1842] 
 
 The notice of objections should be drawn with reference to the 
 pleas, or notice given of the pleas to which the objections are to 
 be applied. (1 Web. P. C. 616.) 
 
 (w) Macnamara v. Hdlse. N. P. [1842] 
 
 Lord Abinger, C.B. : " Whatever objections the defendants 
 may have given you notice of, they cannot go beyond their 
 pleas. I apprehend that the statute (6 & 6 Will. 4, o. 83) does 
 not make the notice of objections stand in the place of pleas." 
 (2 Web. P. a 128 («.).) 
 
 (y) EussBLL V. Ledsam. [1843] 
 
 To an action for infringement it was pleaded that the report of 
 the Judicial Committee of the Privy Council and the letters 
 patent thereupon were procured by fraud and misrepresentation i 
 —Held, that the notice of objections delivered under 6^ & 6 Will. 4, 
 0. 83, s. 5, ought to state the species of fraud or misrepresentation 
 relied on. (11 M. & W. 647.) 
 
 (z) Jones v. Berger. [1843] 
 
 The notice of objections must point out the defence with 
 
302 PEACTICE : 
 
 greater particularity than the record. The Court -will see that 
 the objection is stated with reasonable particularity, according 
 to the circumstances of the case. (1 Web. P. G. 544 ; 5 M. d G. 
 208.) 
 
 (a) E. V. Mill. Sci. fac. [1850] 
 
 The notice of objections is not part and parcel of the record, 
 so as to be incorporated with the issues raised, and show that 
 those specific objections are in issue. (1 L. M. & P. 695; 10 
 G. B. 379.) 
 
 (&) Betts v. Walker. [1850] 
 
 In an action for infringing a patent, if the defendant's notice of 
 objections under stat. 5 & 6 Will. 4, c. 83, s. 5, is too general to 
 give such information as the plaintiff is entitled to, it is no answer 
 to a motion for better notice that the notice is as specific as the 
 pleas. (14 Q. B. 863.) 
 
 (c) Hull v. Bollakd. [1856] 
 
 In an action for the infringement of a patent, if the particulars 
 of objections, delivered with the pleas pursuant to the 15 & 16 Vict. 
 o. 83, s. 41, are too general, the party who means to object to them 
 must procure an order for better particulars. (1 H. & JV. 134; 
 25 L. J. Exch. 804.) 
 
 {d) Chollet v. Hoffman. [1857] 
 
 The requirements of the statutes 5 & 6 Will. 4, c. 83, and 
 15 & 16 Vict. c. 83, as to the notices by the defendant, are confined 
 to notices affecting the validity of the patent ; and the defendant 
 may, therefore, object to the want of registration of an assign- 
 ment of the patent, to the plaintiff, although it is not specially 
 mentioned in his notices of objections. (7 Ell. & Bl. 686 ; 26 L. J., 
 Q. B. 249.) 
 
 (e) Curtis v. Platt. [1863] 
 
 The principle upon which the Court proceeds in regulating the 
 form of particulars of objections on the trial of a patent case, is to 
 guard against a surprise upon a plaintiff by production on the 
 trial of evidence of prior user or publication of which he has no 
 notice. Therefore it will require the defendant, in stating those 
 instances on which bo intends to rely, to put the plaintiff in 
 possession of all he himself knows, so far as to enable him to 
 identify the instances alleged. (8 L. T. Bep., N. S. 657.) 
 
 (/) Eenard v. Levinstein. [1864] 
 
 On the trial of a suit in equity to restrain the infringement 
 of a patent, the Court, sitting without a jury, will not use the 
 same strictness in matters of pleading as would be necessary in a 
 trial before a jury ; but will follow that course of procedure which 
 it deems best in order to diminish the expense, and hasten the 
 determination of the suit. Therefore, although a defendant gave 
 
Particulars of Ohfeetions. 303 
 
 no notice of objection to tlie patent on the ground of prior publica- 
 tion up to the time of proving the cause, and only gave notice of 
 such objection after the plaintiff's case was closed and the 
 defendant's had been opened, the Court then allowed a motion by 
 the latter to amend his particulars of objection by an allegation of 
 prior publication in a given document. Costs of motion and extra 
 costs thereby incurred to be paid by the defendant in any event. 
 (11 L. T. Bep., N. S. 605 ; 13 W. B. 229.) 
 
 (fif) Daw v. Elet. [1865] 
 
 The defendant will not be allowed, in the course of the hearing 
 before the Court without a jury, to introduce evidence of a prior 
 user not disclosed by the particulars of objection, although such 
 evidence may have only come to his knowledge since the delivery 
 of the particulars of objection. Semhle, that the Court will give 
 the defendant leave, on short notice of motion, to amend his par- 
 ticulars of objection, so as to introduce such newly discovered 
 evidence. (L. B., 1 Eq. 38.) 
 
 Qi) BoviLL V. G-ooDiEE. [1865] 
 
 The defendant will not be required to deliver particulars of his 
 objections to the patent, where replication has been filed and the 
 Court has refused to direct issues. (L. B., 1 Eq. 35 ; 36 L. J., Gh. 
 174; 35 Beav. 264. But see Finnegan v. James, L. B. 19 Eq. 72.) 
 
 (i) Daw v. Elet. [1865] 
 
 A plaintiff in a patent case, where the novelty of the invention 
 is denied by the answer, has no right to a discovery of the par- 
 ticulars on which the defendant relies as showing a user of the 
 thing patented prior to the date of the patent. (2 Hem. & M. 
 12b.) 
 
 (j) Morgan v. Fuller. [1866] 
 
 In a suit to restrain the infringement of a patent for improve- 
 ments in the construction of carriages, the alleged invention con- 
 sisting of a particular mode of opening and closing the heads of 
 carriages, particulars of objections stating that head-joints similar 
 to those used in the plaintiff's alleged invention had been, before 
 the date of the patent, commonly used by carriage builders generally 
 throughout Great Britain, and that head-joints, similar to those 
 described in the specification, had been actuated in their motions 
 in the way described, before the date of the patent, by various 
 carriage builders in or near London, Liverpool, Manchester and 
 Southampton, and various other of the principal toums of Great Britain, 
 were held insufficient. 
 
 Semble, that where the objection points to the public use of a 
 particular preparation, the words " by various makers in or near 
 London," might be sufficient. 
 
 Semble also, if the defendant could not give the names of the 
 carriage builders in or near London, &c., he would be required to 
 specify the class or classes of carriages with respect to which the 
 
304 PEACTICE : 
 
 alleged prior user had taken place, and that might have been held 
 sufficient, (i. B., 2 ^3. 297.) 
 
 (h) BoviLL V. Smith. [1866] 
 
 In a suit to restrain an infringement of a patent which is con- 
 tested on the ground of anticipation by prior use, the plaintiif is 
 not entitled to discovery from the defendant in answer to a 
 general interrogatory as to the instances of prior user on which he 
 relies. (L. B., 2 Eq. 469.) 
 
 {I) Penn v. Bibby. [1866] 
 
 Particulars of objections filed by a defendant were ordered to he 
 amended by the insertion of words specifying " the persons by 
 whom, the places where, the dates at, and the manner in which," 
 there had been tlie alleged user prior to the date of the plaintiff's 
 patent. 
 
 In complying with this order, the defendant was permitted, in 
 his amended particulars, to preface his statement of the specific 
 instances of alleged prior user with the words " amongst other 
 instances," in order to give him an opportunity of applying for 
 leave to re-amend by inserting any further instances of prior user 
 which he might discover, (i. B., 1 Eq. 548.) 
 
 (m) BoviLL V. GooDiEK. [1867] 
 
 The object in directing issues to be tried at law is to ascer- 
 tain the real state of the facts : and therefore the Court in a 
 patent case will allow further particulars of prior user of the 
 invention to be brought forward on proper notice. (36 L. J., 
 Gh. 360.) 
 
 (n) FiNNEGAN V. James. [1874] 
 
 A plaintiff in a patent suit ought either to state in his bill the 
 particulars of the breaches complained of, or to deliver along with 
 his bill a written statement of such particulars, which statement 
 need not be filed. A defendant in a patent suit ought to set forth 
 in his answers the particulars of any objections on which he relies. 
 {L. B., 19 Eq. 72 ; 44 L. J., Eq. 185.) 
 
 ■ (o) Plowee v. Lloyd. C. A. [1876] 
 
 In a patent suit the form of order requiring the defendant to 
 furnish further and better particulars of objections should follow 
 the words of sect. 41 of the Patent Law Amendment Act, 1852, 
 but under such order the defendant must furnish full and sufficient 
 particulars. (45 L. J., Oh. 746.) 
 
 Under such an order the defendants delivered an amended 
 notice of objections that the process had been used by three 
 persons whose names and addresses they gave, and by other per- 
 sons in Bii-mingham and London. Pield, J., said : " If defendants 
 knew that their processes have been used by other persons in London 
 and Birmingham besides those specified, they must know the persons 
 by whom they have been used, and must give more specific informa- 
 
Particulars of Objections. 305 
 
 tion. I do not say that tliey need give the name and address of 
 every such person, but they must give fair information." (20 
 Sol. J. 860.) 
 
 (jp) Baiud v. Moule's Patent Eaeth Closet Company. [1876] 
 
 AND AVELING V. McLaEEN. [1880] 
 
 Forms of orders made giving defendants leave to amend their 
 particulars of objections to the validity of the plaintiff's patent, 
 and providing for the plaintiff to have time to elect whether he 
 would discontinue and for the costs. (17 Ch. D., 139( w.).) 
 
 (5) Edison Telephone Company v. India Eubbee Company. [1881] 
 
 In granting the defendant in a patent action after issue has been 
 joined, and a day fixed for the hearing, leave to amend his par- 
 ticulars of objection, the Court will place the plaintiff in the same 
 position as to discontinuing the action or disclaiming a portion of 
 bis invention as he would have been in if the oiiginal particulars 
 had contained the proposed amendments. (17 Gh. D., 137.) 
 
 (r) Cropper ».. Smith. H. L. [1886] 
 
 A patentee having gone into liquidation his trustee assigned the 
 patent. The patentee afterwards went into a trade partnership 
 with S. The assignees brought an action against the patentee and 
 S. for an injunction and damages for infringement committed by 
 the partnership. The defendants having obtained leave to be 
 treated as having severed in their defence delivered particulars of 
 objections which commenced thus : " Take notice that at the trial 
 of this action the defendants will deny that they have infringed 
 the letters patent in the statement of claim, and the defendant S. 
 will rely on their objections to the validit3', &c." Held, reversing 
 the decision of the Court of Appeal, that under 16 & 16 Vict. c. 83, 
 s. 41, it was not necessary for every one of two or more defendants 
 defending in the same interest to deliver particulars of objections, 
 and that the patentee was not precluded from setting up at the 
 trial the invalidity of the patent on the ground of want of novelty 
 and insufficiency of the specifications. (10 App. Gas. 249.) 
 
 («) Moss V. Malings. [1886] 
 
 During the trial the defendant asked to be allowed to apply for 
 a postponement and leave to amend his particulars of objections on 
 the ground that since tlie cross-examination of the plaintitf he had 
 discovered some new facts which showed want of noveltv. The 
 application was refused on the ground that defendant had not 
 shown that he could not with reasonable diligence have discovered 
 the new facts sooner. (33 Gh. B. 603 ; 35 W. B. 165.) 
 
 (i) Ehrlich v. Ihlee. [1886] 
 
 In granting the defendant leave to amend his particulars of 
 objections, the Court will impose such terms as will place the 
 plaintiff in the same position as if the particulars as amended had 
 been delivered with the defence, even if the plaintiff was aware of 
 
 X 
 
306 PEACTICE : 
 
 the alleged anticipation before the action was brought. (66 L. T. 
 819.) 
 
 (m) Union Electkical Power and Light Company v. Electeical 
 Stoeage Company. C. A. [1888] 
 
 The defendants threatened the plaintiffs' customers with pro- 
 ceedings for infringement of any of their patents for electric ac- 
 cumulators. The plaintiffs asked for an injunction to restrain 
 such threats, and alleged that all the patents were bad. The 
 defendants applied for particulars of objections. Ordered, that 
 on the defendants giving a list of the patents on which they 
 intended to rely, the plaintiffs sliould within three weeks deliver 
 particulars of objections to the validity of those patents. (38 
 Oh. D. 326.) 
 
 («) Britain v. Hiesch. C. A. [1888] 
 
 Sect. 29, sub-sect. (4) gives the Court at the trial a discretion to 
 allow evidence beyond the particulars of objections independently 
 of the power of amendment under sect. 29, sub-sect. (5). (6 0. B. 
 226.) 
 
 (to) Parker v. Maignen's Filtre Eapide Company. [1888] 
 
 Leave to amend particulars of objections on eve of trial given on 
 terms. (5 0. B. 207.) 
 
 (x) Daeeah v. Purser. [1889] 
 
 Leave to amend particulars of objections was given to the 
 defendant by Bristowe, V.-C, and the order was drawn up as in 
 Edison v. India Eubber Company. (6 0. B. 365.) 
 
 (y) Law v. Ashwoeth. [1890] 
 
 The particular machine or part of a machine alleged to be an 
 anticipation must be pointed out. (7 0. B. 86.) 
 
 (z) Smith v. Lang. C. A. [1890] 
 
 In an action to restrain threats, and for a declaration that the 
 patent (which was for improvements in the construction of wire 
 ropes) was invalid, the plaintiff alleged that the invention was 
 previously published by the manufacture, sale, use, or public 
 exhibition of wire ropes made by W. from the year 1832 to 1862: 
 — Meld, that this was too vague, and that further and better par- 
 ticulars ought to be given. (7 0. B. 148.) 
 
 (a) Pasoall v. Toope. [1890] 
 
 At the trial the defendant's witnesses gave evidence of instances 
 of prior user which were different from those set out in his par- 
 ticulars. At the plaintiff's lequest Kay, J., adjourned the case 
 for three weeks, to give him an opportunity of meeting those 
 instances, but declined to make an order such as that made in 
 Edison v. India Bubher Company (sup. 305 (5)). (7 0. B. 125.) 
 
Particulars of Ohjecfions as to Prior User. 307 
 
 As to true and first Inventor. 
 
 (y) Fisher v. Dewick. [1838] 
 
 On the delivery of amended particulars pursuant to an order 
 of the Court, a summons for further amended particulars was 
 taken out and heard before the Lord Chief Justice Tindal at 
 chambers. His Lordship, after time taken to consider, made the 
 following alteration: The words "that the plaintiff was not in 
 possession of the said alleged improvements before or at the date 
 of the letters patent," were struck out of the objection, that the 
 plaintiff was not the true and first inventor of the whole or of any 
 part of the said improvements. (1 Web. P. G. 551 («•)•) 
 
 (z) EussELL V. Ledsam. [1843] 
 
 To an action for the infringement of a patent, the defendant 
 pleaded : That the patentee was not the true and first inventor ; 
 Held, that the notice of objections delivered under 5 & 6 Will. 4, 
 o. 83, s. 5, need not state who the first inventor was, or under what 
 circumstances the invention had been previously used. (11 M. & 
 W. 647 ; 12 L. J., Exch. 439.) 
 
 Parke, B., in delivering the judgment of the Court, said : " The 
 principal point discussed was, whether or no it was necessary in 
 an objection on the ground that the patentee was not the first 
 inventor, or that the invention w^as not new, that the defendant 
 should state who was the first inventor, or when, and in what 
 place and under what circumstances it was used before. This 
 point is not new, for it has been already before this Court and also 
 before the Court of Common Pleas, in the case of Bulnois v. 
 Mackenzie. In that case the Court of Common Pleas would not 
 require those particulars to be given, and their example has been 
 followed by this Court in the case of Heath v. JJnwin. In the sub- 
 sequent case, however, of Jones v. Berger, the Court of Common 
 Pleas deviated from their former decision in Bulnois v. Mackenzie, 
 and compelled the defendant to give the name of the first inventor. 
 On consideration of the matter, however, we think that we ought 
 to abide bj' the cases of Heath v. JJnwin and Bulnois v. Mackenzie, 
 and that no particulars of the circumstances under which this 
 invention may have been previously used should be required from 
 the defendant; and we are fortified in this view by the decision of 
 the Court of Queen's Bench in the case of Reg. v. Walton, in which 
 they adopted the same view. That was originally an application 
 to the Master of the KoUs, which afterwards' came before the Court 
 of Queen's Bench, which we find, on inquiry, to have determined 
 this point the same way." {11 M. d W. 651.) 
 
 As to prior User. 
 
 (a) Bulnois v. Mackenzie. [1837] 
 
 It is doubtful whether under the words (5th section of 5 & 6 
 Will. 4, c. 83) " notice of objection " the Court can require a 
 defendant to furnish the names of those who are alleged to 
 
 X 2 
 
308 PEACTICE : 
 
 have used tlie plaintiff's invention. Application refused on the 
 ground that it might prejudice the defendant. (4 Bing. N. G. 
 132.) 
 
 (6) Fisher v. Dewick. [1838] 
 
 An objection stated that " a particular improvement had heen 
 used by A. B., &c. (giving names and addresses), and divers other 
 people within this kingdom and elsewhere ; " the judge at 
 chambers struck out the words "and divers other people," adding 
 that " if the defendant discover other persons not named in the 
 objections, he has the power of applying to a judge to add such 
 persons." (1 Web. P. G. 551 («).) 
 
 (c) Galloway v. Bleaden. [1839] 
 
 Coltman, J., ordered names, addresses, and descriptions to be 
 given, and the words " divers other persons " to be struck out. 
 (1 Web. P. G. 268 (m).) 
 
 (d) Caepentee v. Walker. 
 
 The objection stated the making of locks similar to the subject 
 of the patent by the defendant and others, several years before the 
 date of the letters patent, and their sale to divers persons, and 
 among others to one S. T., of, &c. On summons to strike out the 
 words " to divers persons, and among others," or to state the names 
 and descriptions of the others besides S. T., to whom sales were 
 made, the parties were referred to the Coiirt, who refused the 
 application. (1 Web. P. G. 268 («.).) 
 
 (e) Keg. v. Walton. Sci. fac. [1842] 
 
 On sci. fac. to repeal a patent, the prosecutor having, while the 
 record was in Chancery, filed notice of objections, under 5 & 6 
 Will. 4, c. 83, s. 6, namely, that other persons than the patentee 
 had used the invention in England before grant of the patent, 
 the Court of Qiieen's Bench, on motion supported by an affidavit 
 stating that the defendant had no other means of gaining the 
 information required, and was afraid of being taken by surprise at 
 the trial, refused to order delivery of a particular stating the 
 names and addresses of such persons. (2 Q. B. 969.) 
 
 (f) Heath v. Unwin. [1842] 
 
 It is not sufficient notice of an objection to say that the inven- 
 tion was wholly or in part used before, but it ought to point 
 out what portions were previously in use. (10 Jlf. & W. 684 ; 
 1 Web. P. G. 551 ; 2 D. N. S. 482 ; 6 Jur. 1068 ; 12 L. J., Ex. 
 46.) 
 
 (cf) EussELL V. Ledsam. [1843] 
 
 To an action for the infringement of a patent, the defendant 
 pleaded : That the invention was not, when the letters patent 
 were granted, a new invention : — Held, that the notice of objec- 
 tions delivered under 5 «fe 6 Will. 4, c. 83, c. 5, should specify 
 
Particulars of Objections as to Prior User. 309 
 
 whether the defendant objects to the pq,tent generally as not new, 
 or to part only, and, if so, to what part. (11 M. d: W. 647 ; 1 
 D. & L. 347 ; 7 Jur. 585 ; 12 L. J., Exch, 439.) 
 
 (h) Jones v. Berger. [1843] 
 
 The words " and elsewhere " should he omitted, the places to 
 he specified should fresh evidence arise. The notice of objections 
 is sufiioient if it limits the inquiry to a particular species and 
 class of persons, who are usins; it in a particular trade. ( 1 Weh. 
 P. a 549.) ^ 
 
 Maule, J., said : " It seems to me to be a reasonable particu- 
 larization if it (the notice of objection) points out to the party 
 who is to sustain the patent sufficiently the nature of the inquiry 
 that the objector intends to rely on as to the patent. It seems to 
 me not unreasonable to say ' at Nottingham and elsewhere ; ' for 
 the nature of the fabric being specified, and the particular kind 
 of starch also specified, it might well Ije, as my brother Bompas 
 has argued forcibly, that there might be fabrics of that kind in 
 the market, which could be shown to have been made of that 
 kind of starch, though you may not be able to trace where they 
 came from. I don't think it worth while to differ from my Lord 
 Chief Justice in that respect." (1 Web. P. C. 550.) 
 
 The defendant should specify books or publications intended to 
 be relied on. (1 Weh. P. C. 548.) 
 
 (i) Bentlet v. Keighley. [1844] 
 
 In case for infringing of a patent for improvements in 
 machinery, the notice of objections delivered pursuant to 5 & 6 
 "WiU. 4, c. 83, s. 6, stated that the invention was known to and 
 used by A. and B., and others, before the grant. The Court 
 refused to require the defendant to strike out the words " and 
 others." Maule, J., in the course of the argument, said : " The 
 plaintiff may know one person, and he may know that there are 
 others who have used the article. Suppose the patent to he for 
 an improvement in shipping, and the defence relied on were, 
 that it had been used before, the defendant would not be bouncl, 
 in his particular, to state the names of all the owners of all the 
 ships in which he had seen the alleged improvement applied. 
 But, if he states that the invention had been published to the 
 world in a certain magazine or journal, and also in other books 
 and writings, he ought to specify all the books and writings." 
 (7 M. & a. 652; 8 Scott, N. B. 372; 1 D. d L. 944; 13 L. J., 
 a P. 167.) 
 
 (j) Holland v. Fox. [1853] 
 
 Where the defendant in an action for infringement of a patent 
 states in the particulars of objection delivered with his pleas that 
 the invention of the plaintiff had been used before, ijiter alia, at 
 Sheffield, Birmingham and London, the Court made an order, 
 under the 15 & 16 Yict. c. 83, for further and better particulars. 
 (1 a L. Bep. 440 ; 1 W. B. 448.) 
 
310 PEACTICE : 
 
 (h) Palmee v. Cooper. [1853] 
 
 The 41st section of the 15 & 16 Vict. c. 83, requires the 
 defendant in an action for the infringement of a patent, to 
 deliver with his pleas the particulars of any objections on which 
 he means to rely at the trial ; and when he intends to rely upon 
 a prior user or publication, the particulars must state the place or 
 places at which, and in what manner, the invention has been used 
 or published prior to the date of the patent ; and in the absence 
 of such statement, the defendant will be precluded from giving 
 evidence of such prior user or publication. The plaintiff's 
 particulars of breaches cannot be calk-d in aid of the defective 
 particulars of objections. Although a judge at chambers has 
 power to order the amendment of the particulars, he cannot 
 introduce into such order any terms relative to the admissibility 
 of evidence at the trial under such particulars which are incon- 
 sistent with the provisions of the 41st section. (9 Bxch. 231 ; 
 2 a L. B. 430 ; 23 L. J., Exch. 82.) 
 
 Parke, B. : " 'i he defendant's particulars ought to give the 
 plaintift' such information as will enable him to make the 
 necessary inquiries at the places named." (9 Exch. 236.) 
 
 Alderson, B. : "I think that the present residence of the 
 parties who have been the users of the invention ought to be 
 stated, as otherwise the plaintiff would not know where to go 
 for his evidence." (lb.) 
 
 (I) Palmer v. "Wagstaffe. [1853] 
 
 Where, in an action for the infringement of a patent, the 
 defendant relies on a general user of the supposed invention, it 
 is sufficient to state, in his particulars of objection, under 15 & 16 
 Vict. c. 83, s. 41, that the invention was used by manufacturers 
 generally at a particular place, without naming any person or 
 specifying any manufactory. (8 Exch. 840; 17 Jur. 581; 22 
 L. J., Exch. 295.) 
 
 Alderson, B. : "A defendant may rely either on a specified user 
 by certain persons named, or on a general user by all persons 
 at a particular place. In the former case, if he proves a user 
 by any one of the persons named, that will support his objection ; 
 but if he rests his case on a general user, proof of a user by 
 one person will not do. In fact, the plaintiff has no reason 
 to complain of the generality of the statement, for the more 
 general it is, the more the defendant must prove under it." 
 (8 Exch. 842.) 
 
 (m) Hull v. Bollard. [1856] 
 
 The 15 & 16 Vict. c. 83, s. 41, does not prevent defective 
 particulars from being available at the trial, and the plaintiff 
 cannot resist the admiss'on of evidence which is within the 
 literal mieaning of the particulars, on the ground that the 
 statement is too general, and that the particulars do not give 
 the required information as to the place in which the invention 
 
Particulars of Objections as to Prior User. 311 
 
 is alleged to have been used. (1 E. & N. 134 ; 25 L. J., Exch. 
 304.) 
 
 Pollock, 0. B. : " It is true that the statute contains a pro- 
 viso that the place or places at which the invention is alleged 
 to have been used shall be stated, but that pioviso does not 
 prevent particulars not containing such statement from being 
 available, if not objected to on that ground before the trial." 
 (1 H. &N. 137.) 
 
 (m*) Grover and Baker Sewing Machine Company v. "Wilson. 
 [1870] 
 
 The defendant had been ordered to give amended particulars 
 stating pages and lines of the prior specifications relied on, and 
 the parts of the machines alleged to have been used before, and 
 afterwards obtained leave to add other specifications and other 
 names of prior users. Held, that he ought to have given pages 
 and lines and the parts of the machines iu the additional par- 
 ticulars. (W. N. 1870, p. 78.) 
 
 (m) Wilson v. Gann. V.-C. H. [1875] 
 
 In a patent suit which had been set down for hearing, an 
 application made by the defendant, after notice given to the 
 plaintiff, for leave to produce at the hearing of the cause the 
 evidence as to prior user of a new witness discovered since the 
 closing of the evidence, was allowed. (23 W. B. 546.) 
 
 (o) Flower v. Lloyd. C. A. [1876] 
 
 In a patent suit the form of order requiring the defendant to 
 furnish further and better particulars of objections used to follow 
 the words of section 41 of the Patent Law Amendment Act, 1852, 
 and require the defendant to state in his particulars merely 
 " the place or places at, or in which, and in what manner, the 
 invention is alleged to have been used or published prior to the 
 date of the patent," but under such an order the defendant, 
 must furnish full and sufficient particulars. (45 L. J., Oh. 
 746.) 
 
 The defendant gave the names and addresses of three persons, 
 and stated that the patented process had also been used by " other 
 persons in London and Birmingham." The plaintiff took out a 
 summons, which was adjourned into Court, asking that the words 
 in inverted commas might be struck out, on the ground that the 
 notice of objection was not in compliance with the order or with 
 the statute 15 & 16 Yict. c. 83. 
 
 It was contended on behalf of the defendants that, on the 
 authority of Beniley v. Keighley (7 Man. & Or. 652), and Palmer v. 
 Wagstaffe (8 Exch. 840), it was sufficient, under an order to specify 
 the places where the process had been used, to give the names of 
 the towns. 
 
 Field, J. : "I cannot follow the cases that have been cited. 
 We have advanced in our ideas since they were decided. If the 
 defendants knew that their processes have been used by other 
 
312 PEACTICE : 
 
 persons in London and Birmingliam besides those specified, they 
 must know the persons by whom they have been used, and must 
 give more f^peoific information. I do not say that they need give 
 the name and address of every such person, but they must give 
 fair information. If they can give no further information, the 
 words in question are useless and too indefinite, and must be 
 struck out." (Solicitors' Journal, 1876, p. 860.) 
 
 (p) Plimpton «. S FILLER. Field, J. [1876] 
 
 The defendants alleged by their objections that the invention 
 was, before the date of the alleged patent, patented in the United 
 States of America, and the said prior American patent was 
 surrendered before the defendants made and used the said 
 invention. That " before the date of the alleged letters patent 
 the alleged invention had been published in England in the 
 Commissioners of Patents Journal of the 6th of February, 1863, 
 and in the Scientific American of the 24th of January, 1863, and 
 in sketches and drawings deposited in the Patent Office Library 
 in July, 1865:" — Held, that the defendant must give better 
 particulars. They must state the date of the American patent, 
 the name of the patentee, and the date of the alleged surrender. 
 The pages of the publication mentioned in the above objections 
 must be specified, but not the lines, and the drawings must be 
 identified in writing, wliether contained in books or not. The last 
 part of the order to be in the terms of Flower v. Lloyd. (20 
 Solicitors' Journal, 1876, p. 860.) 
 
 (q) Sugg v. Silber. C. A. [1877] 
 
 Under notice of objection by a defendant, that the invention 
 was not new, he can at the trial show that one of two inventions 
 described in the specification is not new, and that the patent is 
 therefore bad. (2 Q. B. D. 493.) 
 
 (r) Birch v. Mather. [1883] 
 
 In a patent action the plaintiff is entitled under the 41st section 
 of the Patent Law Amendment Act, 1852, to have the names and 
 addresses of the persons mentioned in the particulars by whom it 
 is alleged that prior user was made as well as the places where 
 the prior user has taken place. (22 Gh. D. 629.) 
 
 (s) London & Leicester Hosiery Company v. Higham. 
 
 Defendant was ordered to state what portions of the specifications 
 alleged as prior publications were alleged to anticipate the 
 plaintiff's patent, with a reference to pag6s and lines of such 
 specifications, and also what portions of plaintiff's inventions are 
 alleged to have been published prior to the letters patent with 
 reference to the claiming clauses of the specifications of such 
 letters patent. (Lawson's Patents, pp. 75, 330.) 
 
 (i) Boyd v. Horeocks. [1886-8] 
 
 Allegations of prior user by named persons in given years lield 
 sufficient. (3 0. B., 285 ; 5 0. B. 562.) 
 
Particulars of Objections as to Prior User. 313 
 
 (tt) Fo-WLER V. Gaul. [1886] 
 
 It is not sufBcient for a defendant to say, I impeach the patent 
 on the ground of want of novelty, and then to state the time and 
 place of the previous publication or user alleged by him and no 
 more. He must state on what grounds he disputes it, and if one 
 of those is want of novelty, he must state reasonably on what 
 grounds in respect of want of novelty he disputes it, and the time 
 and place of the previous publication or user alleged. In this 
 case the want of novelty suggested was the prior publication of 
 two specifications and of two provisional specifications. It is un- 
 reasonable to fling at the head of the plaintiff the two specifications 
 alone, it being perfectly within the knowledge of the defendant, 
 and not within the knowledge of the plaintifi', what parts he 
 intends to rel)' on ; and, if there are several things, which in nine 
 cases out of ten there are, it is right that he should be called upon 
 to say, " I say that the thing shown in every part of that is an 
 anticipation," or " in the diagram so and so," or "in paragraph so 
 and so," or " in the explanation given in pages so and so from 
 some line to some other line," just sufficiently to enable the 
 plaintiff to know in what respect he is to be attacked. (Griff. 99 ; 
 3 0. B. 247.) 
 
 (u) Haruis v. Eothwell. [1886] 
 
 Order for better particulars of objections to be given, stating to 
 what claim in the plaintiff's specifications each of the objections 
 was pointed, and referring to the purticular parts of the specifica- 
 tions and publication on which the defendant relied as antici- 
 pations. (Griff. 109 ; ^ 0. E. 243.) 
 
 (w) Boyd «. Farrar. [1887] 
 
 In an action for damages and an injunction in respect of 
 infringement of a patent for complicated machinery, the defendant 
 delivered particulars of objections, stating that prior to the date of 
 the patent (1), articles made according to the supposed invention 
 were publicly exhibited in use by Messrs. H. at their (named) 
 works in May, 1887, and (2), the supposed invention was published 
 in certain specifications which were enumerated with references to 
 pages and lines where the alleged anticipations were to be found : — ■ 
 Held, that the defendant ought to specify the particular machines 
 or articles alleged to be anticipations, but not the parts of the 
 plaintiff's machine anticipated thereby, as the plaintiff must be 
 taken to know his own invention ; and further, as to (2), that the 
 defendant must state with reference to each specification which 
 parts of the plaintiffs invention, by reference to claiming clauses 
 of the plaintiff's specification were alleged to be anticipated 
 thereby. (W. N., 1887, 157 ; 57 L. T. 866 ; 5 0. iJ. 33.) 
 
 (a;) HoLLiDAY V. Heppenstall. C. a. [1889] 
 
 It is not necessary or proper for a defendant who relies on 
 general public knowledge, to state in his particulars of objections 
 
314 PEACTICE : 
 
 the books which, contain that knowledge, but such general public 
 knowledge must be proved by ordinary evidence with a reference 
 to well-known books if necessary. But, of course, if a defendant 
 relies on any publications as anticipations, he must state what 
 publication he relies on, and that he relies on it as an anticipation, 
 and not as showing the state of general public knowledge, and he 
 ought to state the nature of the alleged anticipation, and to 
 specify where in particular it is to be found, without, in an 
 ordinary case, being obliged to give actual pages and lines. (6 
 0. B. 320.) 
 
 Defendants in an action for infringement of a patent for a 
 dyeitjg process, alleged want of novelty and anticipation, and 
 being called on for particulars, referred to about twenty specifica- 
 tions and a voluminous collection of extracts from books. Ordered 
 that the defendatjts should strike out the publications on which 
 they relied as showing general knowledge which prevented the 
 process being an invention, and should state the nature of the 
 anticipations alleged, and should point out which parts of the 
 specifications they relied on as showing such anticipations. {W. N., 
 1889, p. 66.) 
 
 As to Specification. 
 
 (y) Fisher v. Dewick. [1838] 
 
 On the objection, " that the invention for which the said letters 
 patent were granted is more extensive than, and did not correspond 
 with, the invention described in the specification," his Lordship 
 remarked, " I think the attention of the plaintiff should be called 
 to the particular part or parts.'' His Lordship made the same 
 remark on an objection of discrepancy between the drawings and 
 specification. (1 Web. P. C. 551 (n.).) 
 
 (z) Neilson v. Harfoed. [1841] 
 
 A statement in the notice of objections, " that the specification is 
 calculated to deceive," is sufficient to let in evidence as to any 
 particular passage being false. (1 Web. P. 0. 324 (ra.).) Where 
 the objection simply states the specification to be insufficient, if 
 the plaintiff is contented to take that as notice, any objection may 
 be made at the trial to show that the specification is insufficient. 
 {lb. 332.) 
 
 (a) Heath v. Unwin. [1842] 
 
 It is a sufficient notice to state " that the invention is not pro- 
 perly set forth in the specification," for the legislature never 
 intended that the defendant should argue his case in the statement 
 of objections, which he delivers in compliance with the Act. (10 
 M. & W. 687 ; 12 L. J., Ex. 48.) 
 
 (6) Jones «. Bergbr. [1843] 
 
 The objection that the plaintiff's specification did not " sufficiently 
 distinguish between what was old and what was new," held suffi- 
 cient, as the objection was to an omission in the specification. The 
 
Particulars of Objections as to Specification. 315 
 
 allegation that the plaintiff did not state in his specification " the 
 most beneficial method with which he was then acquainted, of 
 practising his said invention," held suiBciently precise. (5 M. & G. 
 208.) 
 
 (c) Leaf v. Topham. [1845] 
 
 In an action for the infringement of a patent, the defendant, 
 pursuant to sect. 5 of 5 & 6 Will. 4, c. 83, deliveied a notice of 
 objections, one of which stated that the patentee did not, by the 
 specification in the declaration mentioned, sufficiently describe 
 the nature of the supposed invention ; and the other stated that 
 he had not caused any specification sufficiently describing the 
 nature of the supposed invention to be duly enrolled in chancery : 
 — Held, that the last objection was not sufficiently precise ; and 
 the Court ordered an amendment, which was made by inserting 
 the word "other" before "specification." (14 Jf. & W. 146; 14 
 L. J., Exch. 231.) 
 
 Parke, B. : "I think the meaning of the last objection is too 
 obscure. It may either mean, that there is no specification 
 existing among the rolls of the Court, or that that which has 
 been enrolled is defective in not sufficiently describing the inven- 
 tion." (14 M. & W. 148.) 
 
 (d) Akglo-Ameeican Brcsh Light Company v. Ceompton. C. A. 
 
 [1886] 
 In an action for infringement, a defendant gave notice of an 
 objection, that there was a variance between the provisional and 
 complete specification. Ordered to deliver further and better par- 
 ticulars, so as to inform the plaintiff of the scope and nature of the 
 objection, and to show in what the alleged difference consists. 
 (35 W. B. 12T, ; 34 Ch. D. 152.) Order affirmed on appeaL (4 0. B. 
 27; W. N. 1886, 188.) 
 
 (d*) Crompton v. Anglo- American Electric Light Company. C. A. 
 [1887] 
 In an action for infringement, the defendant denied the vali- 
 dity of the patent, and stated the objection that the specification 
 did not sufficiently describe the nature of the invention, and how it 
 was to be performed. Being ordered to furnish further particulars, 
 he repeated the above, with this addition, "inasmuch as it does 
 not contain a sufficient direction to enable v/orkmen skilled in the 
 manufacture of electrical machinery to make a dynamo electric 
 machine," with the property claimed. Kay, J., ordered further 
 particulars, and the Court of Appeal declined to interfere with 
 that order. (35 Oh. £>. 283; 4 0. B. 197.) 
 
 Certificate that particulars of objection have been proven or were 
 reasonable and proper. 
 
 (e) HoNiBALL !;. Bloomee. [1854] 
 
 In an action for the infringement of a patent, the 43rd section 
 of the 15 & 16 Vict. c. 83, made the certificate of the judge who 
 tried the cause, that the defendant's particulars of objections had 
 
316 PRACTICE : 
 
 been proved by the defendant, a condition precedent to bis right 
 on taxation to any costs in respect of such particulars, even in the 
 case of a nonsuit. (10 Exeh. 538 ; 1 Jur., N. S. 188 ; 24 L. J., 
 Exch. 11.) 
 
 Pollock, O.B., said : " With respect to the costs of the issues, 
 there is no doubt that, where the plaintiff is nonsuited, the defen- 
 dant is entitled to all the costs of the issues, that is to say, of the 
 pleadings and evidence necessary to support them. But as these 
 particulars are the creatures of this statute, and the costs of this 
 particular class of proceedings are declared by the legislature to 
 be no part of the general costs of the cause, and that in the absence 
 of a certificate they shall not be recoverable, they are not recover- 
 able." (10 Exch. 642.) (But see Parnell v. Mort, Liddell & Co. 
 inf. p. 316 (i).) 
 
 (/) Greaves v. The Eastern Counties Eailwat Company. [1859] 
 
 The plaintiff having abandoned his action before trial : Seld, 
 that the defendants were entitled to the ousts of the particulars, 
 and of the evirlence in support of them, for sect. 43 of 16 & 
 16 Vict. c. 83 did not apply except when the cause came on for 
 trial. (1 Ell. & Ell. 961 ; 28 L. J., Q. B. 290.) 
 
 (g) Germ Milling Company v. Eobinson (No. 2.) [1885] 
 
 On an application for a certificate that particulars are reasonable 
 and proper under sect. 29, sub-sect. 6, of the Patents Act, 1883, 
 it is not enough that such particulars do not appear to be other- 
 wise than reasonable and proper, but the Court must be satisfied 
 that they are reasonable and proper ; and for the purpose of 
 determining this question the Court will rely solely upon know- 
 ledge derived from the trial of the action, and where an action 
 comes to an end without both sides being heard will not allow 
 additional evidence to be called. The Court will not grant a 
 certificate to a party who is not entitled to any costs of the action. 
 (55 L. T. 282 ; 1 T. L. B. 38 ; 2 T. L. B. 785.) 
 
 (Ti) Cropper v. Smith and Hancock. [1886] 
 
 The defendant Smith delivered three objections, the first only of 
 which was relied on by Hancock in his particulars. The House of 
 Lords held that the first two objections failed, but that the third 
 was sufBcient to invalidate the patent, and that Hancock was not 
 shut out from the benefit of that deciKion. Pearson, J., being 
 applied to by both defendants as judge of first instance for a cer- 
 tificate, certified that the defendant Smith had established his 
 third objection. (IF. N. 1885, p. 11.) 
 
 (i) Parnell v. Mort, Liddell and Company. C. A. [1885] 
 
 The Judge of the County Palatine Court held the patent invalid 
 for an objection appearing on the face of it, but stated that the 
 defendants ought to have the costs of the witnesses brought to 
 support their particulars of objections. Held, that the Vice- 
 Chancellor had power to allow the costs, as the Palatine Court 
 was not affected by 15 & 16 Vict. c. 83 nor fettered by analogy. 
 
Certificate as to Particulars of Objection. 317 
 
 Bowen, L.J. : " I entertain some doubt as to Honiball v. Bloomer, 
 but the point will probably never occur again." (29 Ch. D. 325.) 
 
 (/) EOWCLIFFE V. MOREIS. [1886] 
 
 Where a successful defendant did not apply at the trial for a 
 certificate that he had proved his particulars of objection, but 
 moved for one six months afterwards, he "was given a certificate 
 but no costs of the motion. (3 0. B. 145.) 
 
 {h) Badham v. Bird. [1888] 
 
 The certificate as to particulars of objection was limited to 
 those vrhich were put to the plaintiff in cross-examination. (5 
 0. B. 238.) 
 
 (/c*) LoNGBOTTOM V. Shaw. [1888] 
 
 A certificate of particulars of objection which the defendant, not 
 being called on, had had no opportunity of proving, was refused. 
 (5 O. B. 502.) 
 
 (J) OnDY V. Smith. [1888] 
 
 The defendant succeeded on the grounds of no infringement and 
 no subject-matter, and a certificate as to other particulars of 
 objection which were thereby rendered unnecessary was refused. 
 (5 O. B. 509.) 
 
 (m) GOULAED AND GiBBS PATENT. [1888] 
 
 On a petition for revocation the judge was of opinion that there 
 was no power to give a certificate as to particulars of objection. 
 (5 O. B. 537.) 
 
 («) Cole v. Saqui and Lawrence. 0. A. [1888] 
 
 The Court of Appeal in reversing a decision in favour of a 
 patent has jurisdiction to grant a certificate under sect. 29, sub- 
 sect. 6 of the Patents Act, 1883, that the defendant's particulars of 
 objection were reasonable and proper. ( W. N. 1888, 229.) 
 
 (o) Thomson v. Batty. [1889] 
 
 Where the defendant gives in his particulars a long list of 
 anticipations, and counsel only mentions one or two in court, the 
 Court seldom fails to exercise the power of giving the plaintiffs 
 the costs in any event, and on the higher scale, of the alleged 
 anticipations which have not been proved. (6 0. B. 84.) 
 
 (p) Griffin v. Feaver. [1889] 
 
 In an action for infringement where the patent was challenged 
 on the ground inter alia of anticipation, and (the plaintiff's first 
 witness being unable to distinguish one of the alleged anticipa- 
 tions) judgment was given for the defendant without hearing 
 further evidence, Kekewich, J., gave a certificate that the par- 
 ticulars of objection as to prior user were reasonable, having first 
 ascertained from the defendant's counsel that he was prepared to 
 prove them if they had been required. (6 0. B. 396.) 
 
318 PKACTICE : 
 
 (g) LONGBOTTOM V. Shaw. [1889] 
 
 In this case the Court of fiist instance decided on the specifica- 
 tion alone that the patent was bad for want of subject-matter, and 
 the Court of Ajjpeal took the same -view. To each Court applica- 
 tion was made for a certificate that the particulars of objections 
 were reasonable, and each Court lefnsed to grant one on the ground 
 that the statute did not require the Court to hear objections (which 
 were not necessary as it turned out) for the mere purpose of giving 
 costs. On taxation the taxing-master allowed the defendants the 
 costs governed by the particulars of objectinns. Held, by Kay, J., 
 that no costs of the particulars could be allowed. (6 0. B. 510.) 
 
 (r) Boyd v. Hoeeocks. C. A. [1889] 
 
 The Court of first irjstance found that there was infringement 
 and that the patent was valid. The Court of Appeal reversed the 
 finding as to infringement and, therefore, declined to go into 
 the question of validity. Seld, that the action must he simply 
 dismissed with costs, and the Court would not consider whether 
 the defendants were entitled to a certificate of objections or the 
 plaintiffs to the costs of some of the issues. (6 0. JR. 152, 528.) 
 
 (r*) MOEGAN V. WiNDOVEE. [1S90] 
 
 The House of Lords having decided against the patent, the Court 
 of first instance gave a certificate limited to the objections brought 
 forward at the trial. (25 N. G. 103.) 
 
 (s) Philips v. The Ivel Cycle Company. [1890] 
 
 Particulars of objection need not be proved in order to obtain a 
 certificate ; it is for the judge to read them and say whether they 
 are reasonable and proper ; a certificate was given fur particulars 
 which led the way to the antiuipations which proved fatal to the 
 patent. (7 0. B. 77 ; 42 L. T. 392.) 
 
 (s*) Deutsche Nahmaschinen Fabeik v. Pfaff. C. A. [1890] 
 
 The Judge of first instance not having heard evidence, the 
 Court of Appeal heard the defendant's evidence, and, without 
 finding that all the objections were proven, gave a certificate that 
 they were reasonable and proper. (7 0. B. 257.) 
 
 Practice, — Discovery and Interrogatories. 
 
 (J) SwiNBORNE V. Nelson. [1853] 
 
 The plaintiff's right to discovery and to production rest on the 
 same principle. A defendant who submits to answer must answer 
 fully ; he cannot by denial of the plaintiff's title escape answering. 
 Discovery of title-deeds and of professional communications forms 
 an exception. The plaintiff and defendant had both patents for 
 making gelatine. The plaintiif instituted his suit for redress 
 against an alleged infringement of his patent, and the bill con- 
 tained searching questions, requiring the defendant to set forth 
 all the articles manufactured by him, the names and addresses 
 
Discovery and Interrogatories. 319 
 
 of his customers, the prices and the profits, &c. The defendsnt 
 denied all infringement. He said he had made his articles 
 according to his own and not according to the plaintiffs patent, 
 and he declined to give an account of such articles : — Held, that, 
 notwithstanding his denial, he was bound to do so. (16 Seav. 4L6.) 
 
 (it) Smith v. The Great Western Eailway Company. [1854] 
 
 Where, in an action for an infringement of a patent, the plain- 
 tiif seeks, under sect. 6 of 14 & 16 Vict. c. 99, to discover by an 
 examination of the defendant's books the amount of damage sus- 
 tained by him by the infringement of his patent by the defendant, 
 the Court will not compel the defendant to grant such inspection, 
 unless a, prima facie legal right be established by the plaintiff; and 
 it is not enough for the plaintiff to show that he has been injured 
 in his patent, and that it is probable the amount of such injury 
 will be ascertained by the examination asked for. (3 W, M. 69.) 
 
 (u*) Tetley v. Easton. [1856] 
 
 Where a defendant does not deny the infringement, it is no 
 ground for his lefusing to answer interrogatories, that the answers 
 would expose persons to whom he had sold the patented articles 
 to actions. (18 G. B. 643 ; 25 L. J. C. P. 293.) 
 
 (v) De la Eue v. Dickinson. [1857] 
 
 When a defendant by his answer denies the fact of infringe- 
 ment, he is protected from making any discovery immaterial to 
 that question, and which when that question is decided would be 
 given under the decree. And it is not necessary to set up a 
 defence of this nature by plea. (3 K. & J. 388.) 
 
 («)) Jones «. Pratt. [1861] 
 
 The plaintiff, in an action commenced in 1861 for damages for an 
 infringement of his patent, granted in 1841, applied to be allowed 
 to administer interrogatories to the defendant before delivery of 
 declaration, asking, inter alia, for particulars of the number of 
 machines manufactured, altered or sold by the defendant between 
 the years 1841 and 1855, when the patent expired. The applica- 
 tion was made on affidavits by the plaintiff's agent, that he had 
 iasoertained and believed that many machines, containing infringe- 
 ments of the plaintiff's patent, had been made and sold, without 
 the leave of the plaintiff, by the defendant, between the said years, 
 a.nd that answers to the interrogatories would disclose many more 
 breaches of the plaintiff's patent than had as yet been discovered, 
 and that the discovery souglit by the interrogatories was essential 
 for the drawing the declaration in the action. The Court refused 
 to allow the interrogatories to be delivered hefore declaration, but 
 intimated that the plaintiff might probably be entitled to deliver 
 them after issue joined, and that he would then be at liberty to 
 amend the particulars of the breaches he would be bound to 
 deliver with his declaration, in accordance with the answers the 
 defendant might give. (30 L. J., Exoh. 365 ; 6 E. <& N. 697.) ■ 
 
320 PRACTICE : 
 
 (a;) Howe v. M'Keenan. [1862] 
 
 The plaintiff complained that the defendant had sold, under the 
 plaintiff's name, sewing-machines which had not been manufac- 
 tured by him, and he sought a discovery of all the machines sold by 
 the defendant, the price, the profit, the names of the purchasers 
 and other particulars. The defendant refused to answer, saying, 
 that he would thereby disclose the names of his customers and the 
 secrets of his trade : — Held, that he was bound to answer. (30 
 Beav. 547.) 
 
 (jl) FoxwELL V. Webster. [1863] 
 
 The defendant will not be excused from answering fully, and at 
 once, on the ground that the validity of the patent will require to 
 be established by an issue. When separate bills have been filed 
 against numerous defendants, the plaintiff is entitled to a separate 
 answer from each defendant. (3 N. B. 108.) 
 
 (z) Ceossley v. Stewart. [1863] 
 
 In a suit to restrain infringement the defendants were required 
 to set out the names and addresses of all persons from whom they 
 had received sums of money for the use of articles alleged to be 
 manufactured in infringement of the plaintiff's rights, even though 
 such persons might reside abroad. (1 N. B. 426.) 
 
 (a) Eenard v. Levinstein. [1864] 
 
 In a suit to restrain the infringement of a patent for making 
 dyes in a particular manner, the defendant denied that his process 
 was an infringement, and alleged that his process was secret, and 
 that his trade depended on keeping it secret : — Held, that he was 
 bound to answer whether he used the materials mentioned in the 
 specification, and whether he used any additional materials ; but 
 he was not bound to disclose the proportions in which he used the 
 specified materials, or what the additional materials were. (3 iV. B. 
 665 ; 10 L. T. Bep., N. S. 94.) 
 
 (6) Daw v. Eley. [1865] 
 
 Where the novelty of the invention is denied by the answer, the 
 plaintiff has no right to a discovery of the particulars on which the 
 defendant relies as showing a user of the thing patented prior to 
 the date of the patent. {2 H. & M. 725.) 
 
 (c) BoviLL V. Smith. [1866] 
 
 In a suit to restrain an infringement of a patent which is con- 
 tested on the ground of anticipation by prior user, the plaintiff is 
 not entitled to discovery from the defendant in answer to a general 
 interrogatory as to the instances of prior user on which he relies. 
 (i. B., 2 Eq. 459.) 
 
 (d) Thomas v. Tillie. [1866] 
 
 See this case for the form and extent of interrogatories which 
 may be exhibited to a defendant in an action for infringement 
 
Discovery and Interrogatories. 321 
 
 of a patent before plea pleaded. (17 Jr. C. L. B. 783.) The 
 same interrogatories were allowed in England, not reported. 
 (J&. 785.) 
 
 (e) Hoffmann v. Postill. [1869] 
 
 In answering interrogatories filed by a defendant for the exami- 
 nation of the plaintiff, the general rule applies that he who is 
 bound to answer must answer fully. 
 
 Interrogatories for the examination of a plaintiff are on a different 
 footini^ from those for the examination of a defendant in this 
 respect, that a plaintiff is not entitled to discovery of the defendant's 
 case ; but a defendant may ask any questions tending to destroy 
 the plaintiff's claim. 
 
 A defendant in a suit for infringement of a patent, in order to 
 prove that there was no novelty in the plaintiff's patent, interro- 
 gated the plaintiff as to the inventions described in the specifica- 
 tions of previous patents, and asked him to show in what respect 
 they differed from his. The plaintiff declined to answer these 
 interrogatories on the ground that the questions were not questions 
 of fact, and that they related to the plaintiff's case ; the defendant 
 excepted to the answer, and the exceptions were allowed. (L. JR., 
 4 Ch. 673; 17 W. B. 901 ; 20 L. T. Bep., N. S. 893.) 
 
 (/) MuEEAT V. Clayton. [1872] 
 
 An injunction having been granted to restrain, the infringement 
 of a patent, with an inquiry as to damages, an order was made in 
 chambers for an affidavit by the defendants as to the number of the 
 patented machines sold by them, and the names and addresses of 
 the purchasers and of the agents concerned in the transactions. 
 They gave the number of the machines sold, but not the names of 
 the purchasers. On an application by the plaintiff to consider the 
 sufficiency of the affidavit, and another by the defendants to strike 
 out of the order the words they objected to answer, unless the 
 plaintiffs would undertake not to take proceedings against the pur- 
 chasers : — Held, that the plaintiff was entitled to have discovery of 
 the names and addresses of the purchasers, but not of the agents 
 concerned, there being nothing to show that any agents had been 
 employed. (42 L. J., Oh. 191 ; L. B., 16 Eq. 116.) 
 
 (g) Lea v. Saxby. Exch. D. [1875] 
 
 In an action brought upon an indenture licensing the defendants 
 to manufacture certain gates upon a patented principle, in which 
 the defendants covenanted to pay cei'tain royalties upon all gates 
 manufactured by them according to the said principle, and to 
 deliver quarterly statements of the gates, so manufactured by them, 
 to the plaintiff, and to stamp the gates so manufactured by them, 
 and not to sell any gates so manufactured by them below certain 
 specified prices, the Court refused to allow interrogatories to be 
 administered to the defendants, asking the number of gates con- 
 structed by the defendants wherein the apparatus for closing or 
 
 Y 
 
322 PEACTICE : 
 
 ■opening the gates a6ted simultaneously upoii signals. Tlie patent 
 being one for an improved apparatus for closing and opening gates 
 acting simultaneously upon signals, there being other methods 
 besides the patented one of constructing gates so acting, and it 
 being denied by the defendants ihat they had broken their cove- 
 nants, interrogatories as to the- prices of gates sold vcere also dis- 
 allowed, it not appearing that the plaintiff relied upon this as a 
 substantial cause of action. (32 L. T. Bep., N. S. 731.) 
 
 (^) Ceossley ?;. ToMEY. V.-O. M.' [1876] 
 
 In a suit to restrain the infringement of a patent the defendant 
 was required to state whether -he: was not making articles in all 
 respects identical with those of the plaintiff, and to set forth in 
 what respects they differed and by what process they were made : 
 — Held, that the defendant, who alleged prior user by himself and 
 others, had sufficiently answered by stating that, save so far as 
 the articles manufactured by him before the date of the patent were 
 similar to those of the plaintiff, the articles now made differed froin 
 those made by the plaintiff, but he could not show in what they 
 differed without ocular demonstration. Held, also, that the defen- 
 dant was bound, in alleging prior user by other persons, to set 
 forth the names of some of those. persons. (2 Gh. Div. 533.) 
 
 (j) EoLLS V. Isaacs. V.-C. B. [1878] 
 
 The plaintiff alleged that the defendants infringed his patent, 
 dated 1871, by manufacturing a , liquid composition, the principal 
 ingredient of which was the gum of the euphorbia plant. 
 
 The defendants denied the infringement and disputed the validity 
 of the plaintiffs patent, and alleged that they manufactured, under 
 a patent dated 1875, a composition for protecting the bottom of 
 ships, in which the resinous part of gum euphorbia was used. 
 
 The plaintiff interrogated defendants as to whether they had 
 manufactured for protecting ships' bottoms a composition in which 
 euphorbia gum was an ingredient, and not being a composition 
 prepared exactly in accordance with the specification of their 1875 
 patent, and, if so, asking the defendant to set forth the ingredients 
 of such composition, and further ' interrogated as to the ships to 
 which the defendants had, since .the, date of the plaintiff's patent) 
 applied any composition in which euphorbia gum was an ingre- 
 dient, although such ships were not mentioned in the particulars 
 of breaches. All above interrogatories disallowed. ( W. N. 1878, 
 p. 37.) 
 
 (j) Birch v. Mather. [1883] 
 
 In a patent action, where either party makes out a proper case) 
 the Court has jurisdiction to order interrogatories to be answered, 
 notwithstanding the provisions in the Patent Jjaw Amendment 
 Act, 1852, as to particulars, and if the interrogatories are properly 
 worded, they may refer to the very matters which ougtit to be 
 covered by the particulars. (22 Gh. D. 629.) 
 
Discovery and Interrogatories. 323 
 
 (i) In re Haddan's Patent. [1884] 
 
 It is the practice now, if the Court should think fit, to allow a 
 petitioner for revocation of a patent to administer interrogatories to 
 the claimant. Leave granted where the petitioner objected to the 
 patent on six grounds, one of which was fraud. (W.N. 1884, 
 p. 192.) The ordinary practice as to discovery is applicable to 
 a petition for revocation of a patent under sect. 26 of the Patents 
 Act of 1883. (54 L. J., Gh. 126 ; 51 L. T. 190 ; 33 W. B. 96.) 
 
 (I) Lister v. Norton. [1885] 
 
 The rules of the Court as to discovery do not draw any distinc- 
 tion between different subject-matters when in dispute, and the' 
 principle which Jessel, M.R., laid down in Parher v. Wells, viz., 
 that the defendant need not give discovery of that which will only 
 help the plaintiff in case he gets a decree, and will not help him to 
 get it (18 Oh. D. 477), is applicable quite as much to the case of a 
 patent action as it is to the case of a trust action. (Griff. 148 ; 
 
 2 0. B. 68.) 
 
 (m) MosELEY V. Victoria Eubber Company. [1886] 
 
 The defendant in an action for infringement interrogated the. 
 plaintiff as to documents relating to the preparation of the specifi- 
 cations. The plaintiffs patent agent, Mr. Johnson, was also his 
 solicitor, and privilege was claimed for communications made to 
 him. A further answer was ordered on the ground, that it being 
 clear that the communications to Mr. Johnson qua patent agent 
 were not privileged, it was incumbent on the plaintiff, whose oath 
 was conclusive, to distinguish as precisely as possible those which 
 were communications to Mr. Johnson qua solicitor. (Griff. 163 ; 
 
 3 0. B. 351 ; 55 L. T. 482.) 
 
 (w) Haslam Company v. Hall. C. Div. [1887] 
 
 Documents relating to prior litigation concerning the patent 
 instituted, or intended to be instituted by plaintiffs before they 
 became owners of the patent, must be produced, except such as the 
 plaintiffs state on oath to have come into existence, merely to be 
 communicated to the solicitor for the purpose of litigation, actual 
 or intended, and either as materials for briefs, or for his advice 
 and consideration. (5 0. B. 1.) 
 
 (o) BowN V. Sansom. C. a. [1888] 
 
 The plaintiff had, in a former action in reference to the same 
 patent filed certain affidavits, stating that the anticipation alleged 
 by the defendants was fraudulent. The former action had been 
 settled, and the affidavits were ordered to be taken off the file. In 
 an affidavit in the present action, the plaintiff referred to these 
 affidavits, but they were not mentioned in his affidavit of docu- 
 ments : — Seld, that the former affidavits were relevant to the same 
 issue in the present action, and that a further and better affidavit 
 of documents must be made. (5 0. B. 610.) 
 
 Y 2 
 
324 PRACTICE : 
 
 (^p) American Braided Wire Company v. Thompson. [1888] 
 
 The defendants were ordered to produce, for the purposes of an 
 inquiry as to damages, all such parts of documents in their posses- 
 sion as disclosed the names of the customers of the firm of 
 Thompson and Co., to whom articles made, in infringement of the 
 plaintiffs' patent, had been sold. (5 0. B. 375.) 
 
 {q) Thomson v. Hughes. C. A. [1889] 
 
 Order for affidavit by plaintiff, of documents confined to pleadings 
 and orders, shorthand notes of judgments or orders, and particulars 
 of objections in.any actions relating to the patent, upheld on appeal; 
 the plaintiff offering also to include shorthand notes of evidence, 
 and affidavits in other actions. (Tf. N. 1889, 212 ; 7 0. B. 187.) 
 
 (g*) Eylands v. Ashley's Patent Bottle Company. C. A. [1890] 
 In an action for infringement of a patent for improvements in 
 apparatus for manufacturing glass bottles the defendant pleaded 
 (inter alia) want of utility. The plaintiff objected to answer an 
 interrogatory as to whether it was not necessary to introduce 
 modifications into his apparatus to successfully manufacture long- 
 necked bottles, on the grounds that it was not material and that 
 he was introducing improvements which he objected to disclose 
 to a rival trader, and referred to another answer which said that 
 it was not impossible and that such bottles had been manufac- 
 tured, though not for sale. Held, that the interrogatory was 
 relevant and the answer insufficient, as it might be that long- 
 necked bottles could not be made successfully for commercial 
 purposes by the apparatus without modifications, hue that the 
 defendants were not entitled to know what the modifications 
 proposed by the plaintiffs were. (7 0. B. 176.) 
 
 (s) Ashworth v. Eoberts. [1890] 
 
 On the defendant declining to answer as to user on the ground 
 that his process was secret, the plaintiff asked as to each separate 
 step in the specification whether the defendant had read it : — Held, 
 that the defendant must answer. (W. N. 1890, p. 154; 25 N. C. 111.) 
 
 (0 Eawes v. Chance. C. A. [1890] 
 
 North, J. refused to order discovery, before the trial, of the 
 defendant's books containing analyses of the materials used by 
 them, on the ground that if the plaintiffs failed to support their 
 patent, such discovery, being only material to infringement, might 
 become unnecessary. An appeal was dismissed. (7 0. B. 275.) 
 
 Practice. — Inspection. 
 
 Patents Act, 1883, sect. 30. In an action for infiingemcnt of a patent 
 the Court or a Judge may on tlie application of either party malse such order 
 for an injiiuctioii, inspection, or account, and impose such terras and i;ivesuch 
 du'ectioiis respecting the same and the proceedings thereon as the Court or a 
 Judge may see fit. 
 
 ()•) BoviLL V. Moore. [1815] 
 
 Lord Eldon : " There is no use in this Court directing an action 
 
Inspection. 325 
 
 to be brought if it does not possess the power to have the action 
 properly tried. The plaintiff has a patent for a maohine used in 
 making bobbin lace. The defendant is a manufacturer of that 
 article, and, as the plaintiff alleges, he is making it with a machine 
 constructed upon the principle of the maohine protected by the 
 plaintiff's patent. Now the manufactory of the defendant is carried 
 on in secret. The machine which the defendant uses to make 
 bobbin lace, and which the plaintiff alleges to be a piracy of his 
 invention, is in the defendant's own possession, and no one can 
 have access to it without his permission. The evidence of the 
 piracy at present is the bobbin lace made by the defendant. The 
 witnesses say that tliis lace must have been manufactured by the 
 plaintiff's machine, or by a machine similar to it in principle. 
 This is obviously in a great measure conjecture. No Court can be 
 content with evidence of this description. There must be an ordeir 
 that plaintiff's witnesses shall be permitted, before the trial of the 
 action, to inspect the defendant's machine, and to see it work." 
 (2 Coop. 0. 0. 56 (n.).) 
 
 (s) Brown v. Moore. [1816] 
 
 Lord Eldon, referring to this case in Kynaston v. The East India 
 Company, said : " I remember a case, where, on a suggestion that a 
 machine used by the defendant was an infringement of a patent, 
 the Court ordered the defendant to allow an entry into his pre- 
 mises for the purpose of ascertaining by inspection whether the 
 machine was an infringement." (3 Swan. 264.) 
 
 (t) EussELL V. Cowley. [1832] 
 
 The Court not only ordered that the pliiintiff's witnesses should 
 inspect the defendant's machinery at work, but that the defendant's 
 witnesses should inspect the plaintiff's patented machinery at work 
 pending an action for infringement, the object of the Court being to 
 enable the parties to give the best evidence as to whether the defen- 
 dant had been guilty of infringement or not. (1 Weh. P. C. 458.) 
 
 (a) Morgan v. Seaward. [1836J 
 
 The defendant was ordered to permit, after reasonable notice, an 
 inspection of machinery made, or to be made, in pursuance of a 
 certain contract. (1 Weh. P. G. 169.) 
 
 («;) Crofts v. Peach. [1836] 
 
 In an action for the infringement of a patent, the plaintiff will not 
 be compelled to produce a specimen of the pitent articles, to enable 
 the defendant to prepare his defence to the action. (2 Hodg. 110.) 
 
 (w) EossELL V. Crichton. [1837] 
 
 On motion by plaintiff for an order to inspect defender's works, 
 the defender alleged that his manufacture involved a secret process, 
 the value of which would be lost, if inspection was allowed : — 
 Held, that some inspection must be allowed, or else any patent 
 might be infringed with impunity ; and order pronounced for 
 giving inspection of the works and manufacture of both parties ; 
 the viewers being warned not to use any private information 
 
326 PRACTICE : 
 
 which th'ey might acquire through that inspection, except for the 
 purpose of giving evidence. (15 Dee. of Crt. of Sess. 1270.) 
 
 (x) Amies v. Kelsey. [1852] 
 
 An application to inspect the defendant's machinery may he 
 made by the plaintiif under 15 & 16 Vict. o. 83, s. 42, whenever an 
 action is pending, even hefore the delivery of the declaration ; hut 
 such inspection will not be granted as of course, or without the 
 party applying for it showing that the inspection is material for 
 the purposes of the cause. (22 L. J., Q. JB. Si ■ I B. G. 0. 123 ; 16 
 Jur. 1047.) 
 
 {y) Shaw v. The Bank of England. [1852] 
 
 In an action for the infringement of a patent, the Court will not 
 grant an order, under the 15 & 16 Yict. o. 83, s. 42, for an inspection 
 of a machine upon an affidavit " that the machine used by the 
 defendants is the same for which the plaintiff has obtained a 
 patent." (22 L. J., Exch. 26.) 
 
 (2/*) Haeeison v. Spire. [1853] 
 
 A rule nisi for an order to inspect defendant's machinery was 
 granted on motion. (22 L. T. Bep. 92.) 
 
 (z) ViDi V. Smith. [1854] 
 
 The "inspection" mentioned in the 42nd section of stat. 
 15 & 16 Vict. c. 83, is an inspection of the instrument or machinery 
 manufactured or used by the parties, with a view to evidence of 
 infringement, and does not refer to an inspection of books, which 
 is provided for by another Act of Parliament. (3 Ell. <£ £. 969 ; 
 1 Jur., N. S., 14; 23 L. J., Q. B. 342.) 
 
 (a) Jones v. Lees. [1856] 
 
 In an action by a patentee against his licensee on a covenant to 
 pay for roving machines made with the plaintiff's invention, and 
 to make none without, — breach, first, in not paying for roving 
 machines made with the invention ; and, secondly, in making 
 machines without it ; the defendant having, in answer to interro- 
 gatories, admitted the making of many hundreds of roving 
 machines, but not with the plaintiff's invention, and having 
 declared that he could not state to whom they were sold, nor give 
 any further information about them, without disclosing his own 
 evidence ; and the plaintiff claiming in respect of all the machines 
 the defendant had made, under one or other of the covenants, and 
 asserting that he had seen some of them, which had his invention 
 applied: — Held, that the defendant was entitled to such particu- 
 lars as should describe those portions of the machines to which the 
 plaintiff contended that his invention had been applied, and that 
 the plaintiff might inspect the machines on the premises of the 
 defendant, and also examine him viva voce. (25 L. J., Exch. 241.) 
 
 (6) Meadows v. Kirkman. [1860] 
 
 In an action for the infringement of a patent for a mode of making 
 veneers or mouldings, the Coui t refused to order an inspection by 
 
Inspection. 327 
 
 the plaintiff of the defendant's manufactory and machiaery; it 
 being doubtful on the plaintiffs affidavit whether his patent was 
 for the kind of veneering, or for the process by which it was done ; 
 and the defendant positively swearing that he used no machinery 
 in the process. (29 L. J., Exeh. 205.) 
 
 • Pollock, C.B., said : " We ought not to grant such an inspection 
 without, at least, as good a ground for it as would be required in a 
 Court of Equity; or for any inspection of books or documents. 
 Then it must appear that what is asked is really required to prove 
 the plaintiff's case." 
 
 (c) The Patent Type Founding Company v. Lloyd; Same v. 
 Walter. [1860] 
 
 In aji action against a printer for an infringement of a patent 
 for improvements in the manufacture of type, the improvements 
 consisting in the use of lead, tin and antimony in certain propor- 
 tions, the plaintiff applied to the Court under the 42nd section of 
 the 15 & 16 Vict. c. 83, for leave to inspect, and, if necessary, to 
 take specimens of the type for the purpose of analysis. His affidavit 
 stated that he had obtained from the defendant specimens of the 
 type and caused them to be analysed by a chemist who was dead, 
 and that the type so analysed was an infringement of the patent ; 
 but did not set out the report of the chemist or state its substance, 
 or whether or not it was in writing. The Court refused to make 
 an order that the plaintiff should be at liberty to take specimens 
 for analysis. (5 H. & N. 192 ; 29 L. J., Exeh. 207 ; 6 Jur., N. S., 
 103.) 
 
 Martin, B. : "I think that we ought to look at the injunction, 
 inspection and account in the same spirit, and grant or refuse 
 them on such terms as would be fair between the parties." (5 
 if. & N. 198.) 
 
 Bramwell, B., said : " It is difiScult to say that a person autho- 
 rized to inspect might not consume a small portion of the matter to 
 be inspected. Probably inspection must be construed with refer- 
 ence to the matter to be inspected. If the party inspecting cannot 
 otherwise understand its nature and quality, he may probably 
 consume some small portion of it ; but when a sensible meaning 
 with reference to the subject-matter can be given to the word 
 inspection by construing it inspection by the eye, I think it must 
 be confined to that. Type can be inspected by the eye. I think 
 in the present case that more is asked for than the Court has power 
 to grant." (lb. 200.) 
 
 Channell, B., said : " I do not say that the application in point 
 of form must be for an injunction, yet I think that the right (to 
 grant inspection) depends on the plaintiff satisfying the Court that 
 they would have granted an injunction if asked for." {lb.) 
 
 On an application to the Court of Chancery, Wood, V.-C, Eeld, 
 that laches sufficient to defeat the plaintiffs' right to an interlo- 
 cutory injunction was no bar to an order on the same motion for 
 inspection, and made an order that the plaintiffs should be at 
 liberty to take specimens of the type for analysis. (John, 727.) 
 
328 PEACTICE : 
 
 (d) Davenport v. Jepson. [1862] 
 
 Ordered that the plaintiffs and the defendant, Henry Jepson, 
 by their solicitors and scientific witnesses, be at liberty, from 
 time to time, upon giving three days' notice of their intention 
 so to do, mutually to inspect the machines heretofore used by 
 the plaintiffs and the said defendant in the manufacture of 
 chenille, and that the same machines be put to work upon such 
 inspection, and that the plaintiffs and the said defendant, by their 
 said witnpsses and solicitors, be at liberty to take samples of 
 the chenille made or to be made upon the said machines. 
 
 And further ordered that the plaintiffs, by their solicitors and 
 witnesses as aforesaid, be at liberty, upon the like notice, to 
 inspect the machines or exhibits marked, &c., produced by the 
 said defendant, and referred to as exhibits in certain afiidavits 
 filed, &o., and to put the last-mentioned machines to work and to 
 take samples of the produce thereof (1 N. B. 307.) 
 
 (e) The Singer Sewing Machine Company v. Wilson. [1866] 
 Where the defendant deals in machines which are, as is alleged 
 
 by the plaintiff, an infringement of his patent, the defendant will 
 not be ordered, in a suit in respect of such infringement, to allow 
 the plaintiff to inspect all the machines in his stock ; but he wiU. 
 be directed to verify on affidavit the several kinds of machines 
 that he has sold or exposed for sale, and to produce one machine 
 of each class for inspection. It is a matter of coui-se to grant 
 inspection where a prima facie case has been made out. (5 N. B. 
 605 ; 12 L. T. Bep., N. S. 140.) 
 
 (/) PiGGOTT V. The Anglo-Ameeican Telegraph Company. [1868] 
 Inspection refused where it would have disclosed important 
 trade secrets, and from the nature of the case, the plaintiff could 
 have no difficulty in proving the nature of the alleged infringe- 
 ment used by the defendants. (19 L. T. Bep., N. S. 46.) "The 
 Court ought to be satisfied of two things : that there really is a 
 case to be tried at the hearing of the cause ; and that the in- 
 spection asijed for is of material importance to the plaintiff's case, 
 as made out by his evidence." (-^•) 
 
 (g) Neilson v. Betts. H. L. [1871] 
 
 Where, as in ordinary cases, the duty of establishing that 
 the thing patented has been pirated lies on the patentee, courts of 
 equity grant limited orders of inspection for the purpose of enabling 
 him to discharge that duty. Such orders cannot be granted where 
 the piracy alleged has taken place abroad, (i. B., 5 H. L. 1.) 
 
 (h) Saxby v. Easterbrook. [1872] 
 
 The plaintiffs obtained a verdict in an action for the infringe- 
 ment of a patent ; a rule to enter the verdict for the defendants 
 was discharged ; and the defendants appealed. An order was 
 afterwards made for an account of profits, which was not appealed 
 against, but on the parties appearing before the master for the 
 purpose of taking the account, the defendants refused to produce 
 
Inspection. 329 
 
 their boolts. The Court made absolute a rule for production and 
 inspection of the defendants' books, and for interrogatories to the 
 defendants, notwithstanding the pendency of the appeal. (L. B., 
 7 Exch. 207 ; 41 L. J., Exch. 113.) 
 
 (j) Plowee v. Lloyd. C. A. [1876] 
 
 Where in a patent case the plaintiff and defendant are com- 
 petitors in trade, and an order to inspect the defendant's works 
 is made, it should be confined to scientific men, and not be made 
 to include the plaintiff himself. (W. N. 1876, pp. 169, 230.) 
 The plaintiffs alleging that when the inspection took place, the 
 defendants fraudulently removed some of the stones alleged to 
 be infringements, applied for a rehearing. Held, that the stones 
 having been removed only to conceal the names of the customers 
 and not for the purpose of concealing the process, there was no 
 fraud. (10 Ch. D. 327). 
 
 0') The Plating Company v. Faequhaeson. [1879] 
 
 The plaintiffs, patentees for improvements in electro-plating, 
 applied for inspection of the defendants' process. The defendants 
 objected on the ground that the process was a secret one. The 
 Court appointed an analyst to see the process and take samples 
 of the solutions used and to report to the Court upon the facts 
 and his opinions founded upon them. The report was perused 
 by the judge and the leading counsel and returned to the judge, 
 and the Court refused to allow the analyst to be called or cross- 
 examined. (Griff. 187.) 
 
 (fc) G-EEM Milling Company v. Eobinson. [1885] 
 
 The assignees of a patent, which claimed the discovery of a 
 new process or product but not any novelty in machinery, brought 
 an action for infringement. They obtained an order for in- 
 spection of the defendants' process and took ninety-three samples. 
 The defendants applied for an order to inspect and take samples. 
 Held, that both the Court and the defendants might be materially 
 assisted by evidence as to the mode in which the patent was 
 worked and the product produced on behalf of the plaintiffs and 
 that the defendants ought to be allowed inspection of the process 
 as worked by the plaintiffs or their licensees (if willing), with 
 liberty to take samples. (55 L. J. Ch. 287 ; 53 L. T. 696 ; 34 
 W. B. 194; 3 0. B. 11.) 
 
 (Z) Drake v. Muntz's Metal Company. [1886] 
 
 In an action for infringement, the plaintiff took out a summons 
 before delivering his statement of claim for an affidavit verifying 
 the machines and processes used by the defendants, and for inspec- 
 tion. The defendants had already offered inspection. Held, that 
 the plaintiff was only entitled to an order for inspection, the Court 
 having no power to require the defendant to make an affidavit, 
 nor to work the machines in the plaintiff's presence. Costs, costs 
 in the cause. (Griff. 78 ; 3 0. B. 43.) 
 
330 PRACTICE : 
 
 («i) Cheetham v. Oldham. [1888] 
 
 Inspection must be limited to those of tHe defendant's processes 
 as to which a prima facie case of infringement has been made out. 
 (5 0. B. 617.) 
 
 (w) Gaeraed v. Edge. [1889] 
 
 In an action for infringement of a patent for improvements in 
 presses for pressing roof tiles, the defendants set up anticipation 
 by dies made and sold prior to the patent. The plaintiffs asked 
 for an order for production of aU dies and parts of dies and models 
 and drawings of dies intended to be produced by the defendants as 
 being or representing dies used prior to the patent. The case of 
 Nordenfelt v. Gardner was cited as a precedent for such an order, 
 but it appeared that the order in that case was made by consent, 
 and the Court of Appeal, affirming Kay, J., held that there was no 
 jurisdiction to make it, except by consent. (6 0. B. 372.) 
 
 (re*) Eylands v. Ashley's Patent Bottle Company. C. A. [1890] 
 
 In an action for infringement of a patent for improvements 
 in apparatus for manufacturing glass bottles, the defendants 
 applied for inspection of machines which they alleged were 
 in the power of the plaintiff. The plaintiff objected on the 
 grounds that the machines belonged to a limited company of 
 which the plaintiff was a director, and that he was engaged in 
 making improvements on the machines, and it would be injurious 
 to give inspection to a rival. Held, that although the plaintiff 
 ought not to be obliged to give inspection of any modifications, 
 yet that it would aid the Court to have inspection of the machines 
 by which long-necked bottles had been made, and that the 
 plaintiff must make a further affidavit as to whether any of 
 those machines were in existence without modifications. That 
 there was a prima facie case for saying he could procure inspec- 
 tion, and if there were such machines in existence, he must make a 
 lond fide application to the company to give inspection, and make 
 an affidavit as to the result. The company subsequently offered 
 inspection of the machines, but not at work. The judge ordered 
 inspection, and intimated that if it could be done without dis- 
 closing trade secrets the machine should be shown at work. 
 (7 0. B. 175.) 
 
 Practice — Injunction. 
 
 1. Injunction generally. 
 
 'A. Validity of patent. 
 
 3. Infringement must be shown. 
 
 4. Expired patents. 
 
 5. Procedure. 
 
 6. Order. 
 
 Injunction generally. 
 
 Patents Act, 1883, Sect. 30. In an action for infringement of a patent, 
 the Court or a Judge may on the application of either party make suchorder 
 
Injvmction. 331 
 
 for an injunction inspection or account, and impose such' terms and give 
 such directions respecting the same and the proceedings thereon as the Court 
 or a Judge may see fit. 
 
 (o) GiTTiNS V. Stmes. [1854] 
 
 The rule for a writ of injunction was formerly a rule to show 
 cause only in the first instance. (15 G. B. 362 ; 24 L. J., G. P. 48.) 
 
 (p) CLATTOisr V. Percy. [1854] 
 
 The plaintiff having recovered a verdict, an order for an injunc- 
 tion was obtained and made a rule of court. Upon the defendant 
 continuing the infringement after personal service of the order on 
 him, a rule was made absolute for attachment. (48 Leg. 0. 150.) 
 
 (g) Lister v. Eastwood. [1856] 
 
 Where, after verdict in an action for the infringement of a 
 patent, an order for an injunction and for an account to be taken 
 of profits made by the defendant was applied for under section 42 
 of the Patent Law Amendment Act, 1852, the Court would not 
 make an order for an injunction until it was shown that the 
 defendant, after the verdict, had continued to infringe the patent. 
 (3 G. L. Bep. 1249.) 
 
 (r) CoPELAND V. Webb. [1862] 
 
 Where two parties had obtained patents for the same invention, 
 the Court of Chancery refused to interfere by injunction, and left 
 them to try the legal rij^ht, and meanwhile ordered that the 
 defendant should keep an account, and that the matter should 
 stand over till the hearing. (11 W. B. 134; 1 N. B. 119.) 
 
 (s) Plimpton v. Spiller. C. A. [1876] 
 
 An interim injunction will be granted to restrain the alleged 
 infringement of a patent, the plaintiff undertaking to abide by any 
 order of the Court as to damages, when the defendant's trade is a 
 new one and in the event of-the injunction not being granted, the 
 plaintiff would have to bring a multitude of actions for infringe- 
 ment against the purchasers of the patented article sold by the 
 defendant. (4 Gh. D. 286.) 
 
 (t) Heugh v. Magill. M. E. [1877] 
 
 Where a patent for improvements upon a machine, the subject 
 of a prior patent, had been put in practice by the patentee for a 
 term of ten years, but had only been enjoyed bj' him without the 
 licence of the prior patentee for about one year, it was held that, 
 as the undisturbed possession of the patentee did not commence 
 until after the expiration of the prior patent, there had not been a 
 snfiiciently long enjoyment to entitle him to an interim injunction. 
 {W. N. 1877, p. 62.) 
 
 (m) Flower v. Lloyd. V.-C. B. [1877] 
 
 In an action to restrain the infringement of a patent for im- 
 provements in the method of making ornamental tin plates, the 
 
332 PRACTICE : 
 
 plaintiffs obtained an injunction. The defendants, being about 
 to appeal, moved to suspend the injunction pending the appeal, 
 offering to give any undertaking as to damages that the Court 
 might think fit to impose, and to prosecute the appeal with dili- 
 gence, and alleged that if they were prevented from carrying out 
 the numerous contracts they had in hand, the result would be to 
 destroy their connection and to cause them irreparable damage : — 
 Held, no ground for suspending the operation of the injunction, for 
 that the defendants could buy the articles in the market, and so 
 fulfil their contracts. (36 L. T. Sep., N. S. 444.) 
 
 (v) Vavasseur v. Krupp. C. A. [1878] 
 
 A foreign sovereign bought in Germany shells made there, but 
 said to be infringements of an English patent. They were brought 
 to this country in order to be put on board a ship of war belonging 
 to the foreign sovereign, and the patentee obtained an injunction 
 against the agents of the foreign sovereign and the persons in 
 •whose custody the shells were, restraining them from removing 
 the shells. The foreign sovereign then applied to be and was 
 made a defendant to the suit. An order was then made by the 
 Master of the Eolls, and afSrmed on appeal, that, notwithstanding 
 the injunction, he should be at liberty to remove the shells. 
 (9 Ch. X). 351.) 
 
 (w) Freaeson v. Loe. M. E. [1878] 
 
 A patentee can sustain an action for an injunction to restrain a 
 threatened infringement of his patent, even if no actual infringe- 
 ment has taken place. (9 Ch. B. 48.) 
 
 Jessel, M.R., in delivering judgment, said : " I am not aware 
 of any suit or action in the Court of Chancery which has been 
 successful on the part of a patentee without infringement having 
 been proved ; but in my opinion, on principle, there is no reason 
 why a patentee should not succeed in obtaining an injunction 
 without proving actual infringement. ... It seems to me, when 
 you consider the nature of a patent right, that where there is a 
 deliberate intention expressed and about to be carried into execu- 
 tion to infringe certain letters patent under the claim of a right to 
 use the invention patented, the plaintiff is entitled to come to this 
 Court to restrain that threatened injury. Of course, it must be 
 plain that what is threatened to be done is an infringement." 
 {lb. 65.) 
 
 (a;) Adair v. Youns. C. A. [1879] 
 
 An action was brought against the master of a ship to restrain 
 him from using pumps which were an ini'ringement of the plaintiff's 
 letters patent. He denied having used any pumps which were an 
 infringement of the patent, and did not suggest that the owners 
 ought to be parties. It was shown that the ship was fitted up 
 exclusively with pumps which were an infringement of the letters 
 patent, but had been so fitted up before the defendant, who was 
 not a part owner, had taken command of her. He had nothing to 
 do with putting them on board, and they had never been worked 
 
Injunction. 333 
 
 in British waters. Held, by Brett and Cotton, L.JJ. (dissen- 
 tients James, L.J.), affirming the judgment of Bacon, V.-C, that 
 the plaintiff was entitled to an injunction restraining the defendant 
 from using the patented invention, on the ground that he, being 
 ia command of a ship exclusively fitted up with pumps which were 
 an infringement of the letters patent, was intending to use the 
 patented invention. (12 Gh. D. 13.) 
 
 James, L.J., in dissenting to the judgment in this case, said : 
 " I think that an injunction ought not to be granted against a 
 man unless he has done something which he ought not to have 
 done, or permitted something which he ought to have prevented. 
 Now, a master who comes on board ought not to be answerable on 
 the ground that, when he takes the command, there is on board a 
 pump which infringes a patent. He does not, owing to his quali- 
 fied possession, become at once an infringer. . . . An injunction 
 therefore can only be granted on the principle of quia timet, and in 
 applying that principle I think it would be a right exercise of the 
 discretion of the Court not to grant an injunction against a master, 
 who has done nothing wrong, when there is no difficulty in finding 
 and suing . the owner of the ship. . . . Whatever appliances there 
 may happen to be on board, however they came there, pumps, 
 anchors, fire-extinguishers, stolen or not stolen, pirated or not 
 pirated, it is his bounden duty to use them according to the exi- 
 gencies of navigation for the safety of the ship, cargo, and life." 
 (lb. 20.) 
 
 {y) TJsriTED Telephone Company v. Dale. [1884] 
 
 In order to justify the committal of a defendant for breach of an 
 injunction, it is not necessary that the order granting the in- 
 junction should have been served upon him, if it is proved that he 
 had notice of the order aliunde and knew that the plaintiff 
 intended to enforce it. This rule is not limited to cases in which 
 a breach is committed before there has been time to get the order 
 drawn up and entered. Semble : that an injunction to restrain the 
 sale of a complete machine is violated by the sale of the component 
 parts in such a way that they can be easily put together by any 
 one. (25 Ch. D. 778.) 
 
 (z) Haevie v. Boss. [1887] 
 
 It may be a breach of interdict, but is not a contempt of Court, 
 for a defendant against whom an injunction has been awarded to 
 attempt to escape from its effect by manufacturing articles which 
 he bond fide believes not to be a breach of the injunction. (4 0. B. 
 234.) 
 
 (2*) Spencer v. Ancoats Vale Eubber Company. C. A. [1888] 
 
 The owners of a patent dated 1877 for vulcanized india-rubber 
 springs, having brought an action to restrain infringement, the 
 defendant company agreed to a judgment that they should be 
 restrained from infringing the patent of 1877, but without pre- 
 judice to their right to manufacture vulcanized india-rubber 
 springs according to an earlier and expired patent of 1866, of 
 
334 PRACTICE : 
 
 which also the plaintiffs had been owners. . The plaintiffs moved 
 subsequently to sequestrate the goods of the company and to 
 commit certain of the directors for breach of the injunction, and 
 the defendants alleged that what they were doing was covered 
 by the proviso. Held, that the proviso was not intended to 
 give the defendants a licence to use the 1877 patent so far as 
 it was necessary for effectually working the 1866 patent, that, 
 having regard to what was known at the time, the 1877 patent 
 must be construed to claim as an improvement on the 1866 
 patent, the moulding of metal and india-rubber together before 
 it was hardened, that the defendant company had made use 
 of this improvement and that there had been a breach of the 
 injunction. (6 0. B. 46.) 
 
 Injunction — Validity of Patent — Uninterrupted Enjoyment. 
 
 (a) Hicks v. Eaincock. [1783] 
 
 Demurrer to a bill, for an injunction to stay the infringement of 
 a patent right, that the plaintiff had not established his right at 
 law, overruled. (2 Dich 647.) 
 
 (6) BouLTON V. Bull. [1796] 
 
 Injunction granted, where patentee had been in possession for 
 twenty-seven years, that the question as to the validity of the 
 patent might be tried. There was a verdict for the plaintiff, 
 subject to the opinion of the Court upon a case stated. The Court 
 was equally divided in opinion as to the validity of the patent : — 
 Seld, that the injunction should be continued until another action 
 was isrought. (3 Ves. 140.) 
 
 (6*) Thomson v. Mooee H. L. [1890] 
 
 Where a defendant has submitted to an injunction, he cannot 
 be permitted when proceeded against for renewed infringements 
 to question the validity of the patent. (7 0. B. 325.) 
 
 (c) Oxford and Caiibkidgb Universities v. Eichaedson. [1802] 
 
 Injunction granted or continued to the hearing, though the 
 patentee's legal title be doubtful. 
 
 Lord Bldon said : " It is then said, in cases of this sort the 
 universal rule is, that, if the title is not clear at law, the Court 
 will not grant or sustain an injunction, until it is made clear at 
 law. With all deference to Lord Mansfield, I cannot accede to 
 that proposition so unqualified. There are many instances in my 
 own memory, in which this Court has granted or continued an 
 injunction to the hearing under such circumstances. In the case 
 of patent rights, if tlie party gets his patent, and puts his invention 
 in execution, and has proceeded to a sale, that may be called 
 possession under it ; however doubtful it ma.y be, whether the 
 patent can be sustained, this Court has lately said, possession 
 under a colour of title is ground enough to enjoin, and to continue 
 the injunction, till it shall be proved at law, that it is only colour 
 and not real title." (6 Ves. 706:) 
 
Injunction— Validity of Patent. 335 
 
 {d) HaeMee v. Platne. [1807] 
 
 Injunction granted, -where the patentee had been in possession 
 under the patent for thirteen years, until the right was tried at 
 law ; although considerable doubt existed as to the validity of the 
 patent. (14 Yes. 130.) 
 
 Lord Eldon : " The ground upon which, where doubt is excited 
 in the mind of the Court, an injunction is granted, until the legal 
 question can be tried, a ground that was acted upon in the case of 
 Boulton and Watt, in some cases preceding that and some that 
 have occurred since, is this : where the Crown on behalf of the 
 public grants letters patent, the grantee, entering into a contract 
 with the Crown, the benefit of which contract the public are to 
 have, and the public have permitted a reasonably long and un- 
 disputed possession under colour of the patent, the Court has 
 thought, upon the fact of that possession, proved against the 
 public, that there is less inconvenience in granting the injunction, 
 until the legal question can be tried, than in dissolving it at the 
 hazard, that the grant of the Crown may in the result prove to 
 have been valid. The question is not really between the parties 
 upon the record ; for, unless the injunction is granted, any person 
 might violate the patent ; and the consequence would be, that the 
 patentee must be ruined by litigation. In the case of Boulton and 
 Watt, therefore, though a case of great doubt, upon which some of 
 the ablest judges in Westminster Hall disagreed, yet upon the 
 ground of the possession by the patentee against all mankind, the 
 injunction was granted, until the question could be tried." (lb. 
 131.) "I do not say a case might not exist where possession 
 might be distinctly proved, and yet there might be such strong 
 doubt whether the specification was not bad in law, that the Court 
 would hrevi manu interfere, and put an end to the injunction." 
 (16. 133.) 
 
 (e) George v. Beaumont. [1815] 
 
 An injunction obtained on the grounds that the party, under 
 pretence of treating with the patentees for a licence, had watched 
 the process, and then practised it without a licence, will be 
 dissolved if the validity of the patent be doubted, and an account 
 will be ordered to be kept of the extent to which the invention has 
 been practised, until the validity of the patent can be tried at law. 
 (27 Bep. Arts, 2nd Series, 252.) 
 
 (/) Hill v. Thompson. [1817] 
 
 Where there has been a length of exclusive enjoyment under 
 a patent, the Court will grant an injunction in the first instance, 
 -without previously putting the party to establish his right at law ; 
 otherwise where the patent is recent and its validity is disputed. 
 Sometimes the Court will direct the party, against whom the 
 application is made, to keep an account pending the discontinuance 
 flf the injunction. (3 Mer. .622.) 
 
 The injunction having been dissolved, with liberty to the 
 
336 PEACTICE : 
 
 plaintiff to bring an action to establish his patent right, and the 
 defendants to keep an account in the meanwhile ; a verdict 
 having been obtained for the plaintiff on the trial of the action, 
 on application being made to revive the injunction, it was objected 
 that the defendants intended to move for a new trial ; and the 
 matter was ordered to stand over till the result of that application 
 should be known, the parties continuing to keep the account in the 
 interim. (lb. 631.) 
 
 (g) EussELL V. Baensley. [1834] 
 
 The fact of the pendency of an action against another party, is 
 not a sufficient ground for continuing an ex parte injunction, 
 without putting the plaintiff to bring an action against the new 
 defendant. (1 Web. P. C. 472.) 
 
 (A) EussELL V. Cowley. [1834] 
 
 Lord Lyndhurst: "This Court having directed a trial at law, 
 and the jury having found for the patentee, and a motion that the 
 verdict should be set aside and a nonsuit entered having failed, it 
 is quite of course that an injunction should be issued until the 
 hearing of the cause." (2 Coop. C. G. 59 (m.).) 
 
 (i) MoEGAN V. Seaward. [1835] 
 
 Where the plaintiff is assignee of the patent the Court may, 
 on directing a trial instead of granting an injunction, accept the 
 defendant's undertaking to admit the plaintiff's title to the patent. 
 (1 Weh. P. a 169.) 
 
 0") Kay v. Marshall. [1836] 
 
 Lord Cottenham, L.C., said : " The equitable relief flows from 
 the legal title, and the question is whether, upon the statements in 
 the bill, the Court can take upon itself to decide that the plaintiff 
 has no legal title. If the plaintiff, asking for equitable relief 
 upon the ground of a legal title, states upon his bill a title which 
 cannot be supported at law, the defendant may take advantage of 
 it by demurrer." (2 WeK P. G. 42.) 
 
 (Jc) Beeston v. Ford. 
 
 Per Lord Lyndhurst : " There may be considerable doubt as to 
 the validity of a patent; still, if there has been a long exclusive 
 enjoyment, the doctrine of the Court is that an injunction shall go 
 to protect the patent, until the question of its validity is duly 
 determined at law." (2 Goop. Gh. Ca. 68.) 
 
 (Z) LUKIE V. EOBSON. [1837] 
 
 An ex parte injunction having been obtained, and suffered to go 
 undisturbed for two years, and the specification appearing free 
 from obscurity and the evidence of novelty sufficient : — Seld, that 
 the Court could not be doing wrong in upholding the injunction. 
 (9 Bep. Arts, N. S. 55.) 
 
Injunction — Validity of Patent. 337 
 
 {m) BicKFORD V. Skewes. [1838] 
 
 Shadwell, V.-O. : " Whatever may be the objection to the speci- 
 fication, this Court is bound to look to the fact that there has been 
 an enjoyment under the patent, as a sort of practical answer to 
 the theoretical objection." Interlocutory injunction granted after 
 enjoyment for six years. His Lordship, however, said : " I admit 
 that if you were to say six years are suflScient, you may, by cutting 
 off successive portions, reduce the six years to nothing. But I 
 have nothing to do with any other case than the case before me." 
 <1 Web. P. G. 213.) 
 
 («) CoLLAKD V. Allison. [1839] 
 
 Although a patent is of long standing, yet if, from the nature of 
 the alleged invention, or the conflicting evidence as to its novelty, 
 its validiby appears to be doubtful, or if the evidence of exclusive 
 possession is not satisfactory, the Court will not grant an injunction 
 until the title has been established at law. 
 
 After the patentee had obtained a verdict in an action brought 
 to try the validity of the patent, the Court refused to grant an in- 
 junction to restrain the infringement of the patent, on the ground 
 that a rule nisi for a new trial had been obtained and was pending 
 in the court of law, and that the legal title of the patentee was 
 therefore still undecided. (4 M. & C. 487.) 
 
 (o) Curtis v. Cutts. [1839] 
 
 Lord Cottenham : " The rule upon which the Court acts in 
 granting an injunction, where the validity of the patent alone is 
 ^disputed, requires, not merely that there shall have been possession 
 and enjoyment under the patent, but such possession and enjoy- 
 ment must have been undisturbed and exclusive." (2 Coop. C. C. 
 60 (re.).) 
 
 (j>) BicKFORD V. Skewes. [1839] 
 
 When the Court has interfered, in aid of a legal right, by grant- 
 ing an injunction upon the terms of the plaintiff's bringing an 
 action, it will deprive the plaintiff of the injunction if he does not 
 commence and proceed with his action with due promptness ; but 
 it will not do this if the defendant has been supine in the cause. 
 (4 My. & Cr. 498; 8 L. J., Cli. 188.) 
 
 (jj) Neilson v. Harford. [1841] 
 
 Where the plaintiff was directed to proceed at law, in order to 
 try the validity of his patent, and obtained judgment, an injunc- 
 tion was allowed almost as a matter of course. (1 Web. P. C. 
 373.) 
 
 (r) Neilson «. FORMAN. [1841] 
 
 The legal right of a plaintiff ought to be established beyond all 
 possibility of doubt before the Court will be justified in gi anting 
 an injunction, which, by stopping extensive works, will do a 
 
338 PEACTICE : 
 
 mischief to the defendant that, if the plaintiff do not succeed, can 
 never he repaired. (2 Ooop. 61 (w.).) 
 
 (s) MuNTz V. Grenfell. [1842] 
 
 Per Knight Bruoe, V.-C. : " The patent having heen worked 
 hy the plaintiff and defendant as partners, under circumstances 
 affnrding a presumption that the defendunt did not, during the 
 existence of the partnership, dispute tliat the patent was valid, 
 the Court of Chancery will, upon an interlocutory application 
 for an injunction, assume that the patent is valid." (2 Goop. 
 61 (».).) 
 
 («) MUNTZ V. TOSTEE. [1843] 
 
 Upon an appeal, from an order of Bruce, V.-C, for an injunction 
 to restrain the infringement of a patent, Lyndhurst, L.C., said : 
 " The patentee has been in possession of his exclusive piivilege 
 for several (eleven) years, and the Court will not, on any suggested 
 defect of the specification, allow the enjoyment of that privilege 
 to be disturbed until the title has been decided in a court of law." 
 (2 Web. P. a 95.) 
 
 (u) Bridson v. M' Alpine. [1845] 
 
 Motion for an injunction to restrain an infringement ordered to 
 stand over for the plaintiff to biing an action to establish his right. 
 The plaintiff obtained a veidict, but the defendant tendered a bill 
 of exceptions, which could not be determined without some con- 
 sideiable delay. Upon the motion being renewed, the Court, under 
 the circumstances, ordered it to stand over till the bill of exceptions 
 bad been disposed of. (8 Beav. 229.) Where it is not clear either 
 that the patent is legally valid or that it has been infringed, 
 it depends on the degree of doubt which exists on these questions 
 whether the Court will grant the interim injunction. In such 
 cases the Court will cautiously consider the degree of convenience 
 and inconvenience to the parties, and according to the doubt and 
 the degree of inconvenience may either refuse to grant the 
 injunction simply or refuse it on terms of the party undertaking 
 to keep an account, or may direct the motion to stand over on 
 terms of plaintiff proceeding to a trial at law. (J6. 230.) 
 
 (v.) DiECKS V. Mellor. [1845] 
 
 If the defendant admit the validity of the patent, the title of 
 the plaintiff and its infringement by him, the Court will at once 
 issue its injunction with costs. (26 Lond. Jour. 268.) 
 
 (w) Heath v. Uuwin. [1847] 
 
 The plaintiff, having obtained a patent for an improved method 
 of making steel by the application of carburet of manganese, 
 brought an action against the defendant for infringing his patent 
 by using two ingredients, which, when fused, would produce 
 carburet of manganese. The Court of Exchequer held that the 
 patent had not been infringed, either directly or indirectly, because 
 
Injunction — Validity of Patent. 339 
 
 tlie defendant was ignorant of the fact that he was using the same 
 substance as that employed by the plaintiff. A motion for an 
 injunction upon a bill filed prior to the action was now opposed,, 
 on the ground that the decision of the court of law was final, and 
 the bill onght to be dismissed. The Court considered that although 
 the act was committed unconsciously, the defendant was liable for 
 the injury he had done, and consequently retained the Mil. and 
 gave liberty to the plaintitf to bring another action. (16 L. J., 
 Ch. 283.) 
 
 (x) The Electric Telegeaph Company v. Nott. [1847] 
 
 As a general rule, the Court ought not to give its aid to the 
 legal right by injunction unless satisfied, the legal right being 
 disputed, that in the i-esult such legal light will be es-tablished ; 
 or, the legal rij^ht not being disputed, that the acts complained of 
 are a violation of it. There is an exception where the sole question 
 is the validity of a patent, and theie has been a user of the patent, 
 and an exclusive enjoyment under it for a reasonable time. The 
 Court will in such a case interpose by injunction, until the validity 
 of the patent has been ascertained hy a trial at law. But where, 
 though the validity of the patent is not disputed, yet, there is 
 conflicting evidence upim the question of infringement, the general 
 rule applies, the Court will not grant an injunction until it has 
 been ascertained by a trial at law that there has been an infringe- 
 ment. (2 Coop. 41.) 
 
 (jD Stevens v. Keating. [1847] 
 
 Application to restrain defendant from infringing plaintiff's 
 patent. Shadwell, V.-C, said : I think, " with jeference to the 
 very language used in Kay v. Marshall, that where a patent has 
 been taken out for several years, aiid there has been a dealing 
 upon it, a user of it, that it is not, at the end we will say of twelve 
 years, to be set aside merely because speculations may be made of 
 more or less fone upon its validity as regards the language of the 
 specification. I cannot but myself think, therefore, that in this 
 case there has been such a 'prima facie established legality of 
 the plaintiff's patent, that it is the duty of the Court to grant 
 the injunction; but the plaintiff, of course, must be put to 
 bring such action as will try the validity of the patent, and 
 then the defendant will have the opportunity of trying the 
 question fairly." (2 Web. P. 0. 176.) Affirmed on appeal, 
 Cottehham, L.C., said: The rule, that "in doubtful cases great 
 care ought to be taken by this Court not to grant an injunction 
 which is at all likely to prove unfounded ... is con6ned to cases 
 where there is a serious doubt in the mind of the judge as to 
 whether the title to the injunction is made out or not, for if the 
 Court sees that there is a clear case for an injunction, it would be 
 absurd to say, go to law and prove that which you have already 
 proved here, before I grant an injunction. In patent cases, how- 
 ever, a rule steps in which is quite consistent with the general 
 rule to which I have just referred, and, indeed, is only an instance 
 
 z 2 
 
&4d PEACTICE: 
 
 of the exception whicli a correct statement of that rule must alwaj-^ 
 include, viz., that long and uninterrupted possession shall be 
 considered such ^Hmd facie evidence of title as to justify the Court 
 in protecting the patent rio;ht by an injunction until its invalidity^ 
 if it be invalid, shall have been established by an action at law.'- 
 (2 PA. 335; 2 Weft. P. a 177.) 
 
 (z) Ceosskill !).. Etory. [1848] 
 
 Though a patentee had enjoyed his patent for a considerable 
 time, and had succeeded' in several actions for an infringement 
 thereof in upholding his patent, yet there beihg a new infringement 
 by a different party, an injunction to restrain him was refused 
 until after a trial at law. (10 L. T. Bep. 459.) 
 
 (a) Bridson v. Benecke. [1849] 
 
 The plaintiff having been put to establish his legal right> 
 succeeded on the trial, but the defendants tendered a bill of 
 exceptions. An injunction was granted, under the circumstances, 
 before the bill of exceptions had been disposed of. (12 Beav. 1.) 
 
 (6) Caldwell «;. Vanvlissengen. [1851] 
 
 Injunction granted against subjects of the kingdom of HoUafid, 
 to restrain them from using , on board their ships within 
 the dominions of England, without the licence of the plaintiffs; 
 an invention, to the benefit of which the plaintiffs were exclu- 
 sively entitled under the Queen's piatent, the title of which had 
 been maintained at law against several attempts to impeach it. 
 Where a legal right exists, the Court cannot refuse to interfere 
 for its protection, upon grounds which depend exclusively on 
 considerations of national policy. (9 Hare, 415; 21 L. J. Gh. 97; 
 16 Jur. 115.) 
 
 Turner, V.-C. : " Where there has been long enjoyment under 
 the patent (the enjoyment of course including use), the public 
 have had the opportunity of contesting the patent ; and the fact 
 of their not having done so successfully affords, at least prima, 
 facie, evidence that the title of the patentee is good ; and the 
 Court therefore interferes before the right is established at law.'" 
 (9 Hare, 424.) . 
 
 (c) Baxter v. Combe. Ir. Ch. [1851] 
 
 On a motion for an injunction to restrain the infringement of 
 a patent, an order was made that the motion should stand until 
 the plaintiff brought an action at law. There was a verdict 
 for the plaintiff, and the defendant tendered a bill of exceptions, 
 pending which the motion was renewed ; the Court granted an 
 injunction, the plaintiff undertaking to abide any order which the 
 Court might make, by directing an issue, or otherwise, to asceitain 
 the damage, if any, which the defendant should sustain by obeying 
 the order, in case the defendant should obtain judgment in the 
 action at law. (3 Ir. Ch. B. 245.) 
 
Injunctioti-^Validity of Patent. 341 
 
 ' (c?) Brown ». KiDSTONE. [1852] 
 
 , The patistif -vfras not obtained for' Scotland till some montlis after 
 ,it liad been obtained for England. In tlie interval a dosoription 
 of the invention bad appeared in a magazine circulated in 
 Scotland : — Held, that this publication created such a .prima facie 
 objection to the patentee's title, tha^ he could not interdict parties 
 in Scotland alleged to be using the invention without a licence. 
 (1 S. M. & P. 769.) 
 
 (e) NewalI; v. Wilson. [1852] 
 
 Where a patent had been in force for* twelve years, and had 
 been the subject of four suits against diiferent persons, all 'of 
 which terminated favourably to the patentee, and in two of 
 ■which verdicts had been given in favour of the validity of the 
 patent: — Held, that in a fifth case, the patentee was entitled lo 
 an injunction pending the trial of the legal right, although a 
 fresh fact was brought forward, tending to impeach tbe novelty 
 of the invention. (2 Be G., M. & G. 282.) 
 
 (/) Hancock v. Moulton. [1852] 
 
 Length of time and uninterrupted enjoyment of a patent 
 give a colour of right even where there has not been a trial at 
 law. The Court ought not to grant an injunction to restrain an 
 .infringement of a patent before a trial at law, unless the evi- 
 dence of infringement be such that the Court would on the same 
 evidence commit the defendant for a breach of the injunction. 
 (M. Dig. 506.) 
 
 (g) Lister v. Eastwood. [1855] 
 
 Where a patentee had brought an action- for damages, and 
 at the trial an arbitration had been agreed to, upon which the 
 arbitrator by his award had established the validity of the patent, 
 and the patent had been again invaded; the Court, upon a bill 
 '£led for an injunction to restrain the infringement, held, that the 
 award of the arbitrator must be considered as .equivalent to a 
 verdict establishing the validity of the patent, against which there 
 had been no motion for a new trial. (26 L. T. Bep. 4.) 
 
 (Ji) Gardner v. Broadbent. [1856] 
 
 Sir J. Stnart, V.-C., said : " If the plaintiff is in a position to 
 support by proper evidence his title to tbe patent, and to prove 
 the fact of its having been infringed, he is in every other respect, 
 in spite qf the recency of its date (1855), entitled to move in this 
 court ex parte for an injunction. ... There is no law of this court 
 which prevented a patentee by the recency of his patent from 
 applying for an injunction ex parte ; and I wish it to be understood 
 
 . that the law of the court is that laid down by Lord Bldon in the 
 case of The Universities of Oxford and Cambridge v Eichardson," 
 
 . (2 Jur., N. S. 1041.) 
 
342 PRACTICE : 
 
 (i) Betts v. Menzies. [1857] 
 
 Where there is doubt as to the validity of the plaintiff's patent, 
 but he has had eight years of undisturbed enjoyment under it, 
 and the defendant had neglected to dispute the validity of the 
 patent on a former occasion, when he had the opportunity of doing 
 so, an injunction v^as gi anted, and plaintiff ordered to proceed to 
 trial at law. (3 Jur. N. S. 357.) 
 
 Wood, V.-C. : " The law of this couit is, that where the patentee 
 has had long enjoyment, there he shall have an injunction to 
 protect his rights until trial, even although his rights under his 
 patent be doubtful." (26. 358.) 
 
 (y) Clark «. Fergusson. [1859] 
 
 Bill for an injunction to restrain the defendants from working 
 the plaintiff's patent, dated April, 1859, for an improved kind of 
 block for lowering boats. The defendants were employed to manu- 
 facture blocks for the plaintiff, but having, as they claimed, dis- 
 covered an improvement on the plaintiff's invention, they requested 
 the plaintiff to introduce such alleged improvements into his speci- 
 fication, and allow the defendants a share of the profits. The 
 plaintiff having lefused this the defendants applied for a patent, 
 and claimed a right tu work their invention independently of the 
 plaintiff. Injunction granted, under the circumstances, in spite of 
 the recent date of the plaintiff's patent. (1 Giff. 184.) Sir J. 
 ytuart, V.-C. : " It is not a mere matter of course, because a patent 
 is recent, to call on the patentee to establish his rights at law 
 before he can obtain relief in this court. It is in the discretion of 
 the Court to require a plaintiff to assert his rights at law or other- 
 wise, according to the nature of the case." {lb. 187.) 
 
 (h) Hills v. Evans. [1862] 
 
 Lord Westbury : " It is the habit and the rule of a Court of 
 JEquity not to grant that injunction (to restrain infringement), at 
 all events at the hearing, and not to make it perpetual unless the 
 legal validity of the patent has been conclusively established." 
 (4 De G., F. & J. 289.) 
 
 (Z) Davenport v. Jepson. [1862] 
 
 The Court will, since the 25 & 26 Vict. c. 42, enter into the 
 question of the validity of a patent on a motion for an interim in- 
 junction. The powers of the Court are not limited by the above 
 Act. (1 N. B. 173.) 
 
 (m) Eenard v. Levinstein. [1864] 
 
 Lord Justice Knight Bruce : " It is necessary, to support a 
 motion to dissolve an injunction, that there should be at least a fair 
 prima facie case in the opinion of the judge or judges who may 
 have to decide the matter as to the validity of the specification ; if 
 |not in every patent case, at least in one which arises upon a patent 
 of no great age. . . . With a patent no older than the present 
 13atent is (three years), though its age is no objection to an intei- 
 
Injunction — Validity of Patent. 343 
 
 locutory injunction of itself, in the present stage of the cau^c there 
 ought to be no injunction, and upon that ground alone I am of 
 opinion that this injunction should for the present be dissolved." 
 Defendant to keep an account. (10 L. T. Bep., N. S. 177.) 
 
 (n) Davenport v. Goldberg. [1865] 
 
 Where the plaintiffs have had thirteen years' user of their patent, 
 their right to which had been established, once at law and once in 
 a Court (if Chancery, the validity of tlie patent is prima facie 
 sufficiently established as against an infringer. (2 H. & M. 282.) 
 
 (o) BOVILL V. GOODIER. [1866] 
 
 A defendant is not to be concluded by a trial at law, establishing 
 the validity of the patent, to which he is no party, and is not to 
 bo driven to contest the validity of the patent by a scire facias. 
 (35 Beav. 427.) 
 
 (p) Penn v. BiBBY. [1866] 
 
 After a trial before the Vice-Chancellor, witTiout a jury, in which 
 issues were found for the plaintiff, a motion for a new trial having 
 been refused by the Vice-Chancellor, and on appeal refuse.! by the 
 Lord Chancellor, was being taken by appeal to the House of Lords. 
 The Court declined to suspend the final order for an injunction, 
 pending the appeal to the House of Lords. (L. B., 3 Eq. 308 ; 36 
 L. J., Ch. 277.) 
 
 (q) The Willcox ahd Gibbs Sewing Machine Company v. Wood. 
 [1869] 
 
 The Court refused to restrain the defendants from selling as the 
 plaintiffs' sewing machines, " with tlio latest improvements," old 
 sewing machines manufactured and patented by the plaintiffs 
 without such improvements. (20 L. T. Bep., N. S. 10.) 
 
 (r) Dudgeon v. Thomson. [1874] 
 
 Sir G. Jessel : " The Court can grant an injunction before the 
 hearing where the patent is an old one, and the patentee has been 
 in long and undisturbed enjoyment of it, or where its validity has 
 been established elsewhere, and the Court sees no reason to doubt 
 the propriety of the result, or where the conduct of the defendant 
 is such as to enable the Court to say that, as against the defendant 
 himself, there is no reason to doubt the validity of the patent." 
 
 The fact of an interdict having been granted against the defen- 
 dant by the Court of Sessions in January, 1873, held to be sufficient 
 prima facie evidence of the validity of a patent for the United 
 Kingdom granted in 1866, to warrant the Court granting an inter- 
 locutory injunction. (30 L. T. Bep., N. S. 244.) 
 
 (s) Plimpton v. Malcolmson. [1876] 
 
 An injunction to restrain an alleged infringement will not be 
 granted on an interlocutory applicition, unless it can be shown 
 that there has been active user of the invention, even where the 
 
344 PEAOTICE : 
 
 patent has been in force for eight years, {L. B. 20 Eq. 37"; 44 L. J.', 
 Ch. 257.) 
 
 (<) Jackson v. Needle. [1884] 
 
 Formerly the Court was not in the habit of granting injunctions 
 to restrain infringements until the title had been established by an 
 action at law. That rule no longer applies, but at the same time 
 the Court has not shown the same disposition to grant injunctions 
 where the patent said to be infringed is of recent date. So far, at 
 any rate, as cases arising before the Act of 1883 are concerned, the 
 Court abstains from interfering by injunction in the case of a 
 recently dated patent, when there is really a substantial question 
 to be tried. Under the Act of 1883 the question which has still to 
 be determined is, whether the investigation and protection which 
 is given to the public under sects. 10 and 11, may alter this rule 
 when the owner of a pateiit of recent date comes for an interim 
 injunction. {Griff. 132; 1 0. B. 174; 2 0. B. 191.) 
 
 (u) Lister v. Noeton., [1884] 
 
 Chitty, J. : " As to what is exactly a recent patent, and what is 
 a patent of sufficient age to support an injunction, that is a matter 
 no doubt more or less of discretion. But the discretion is limited 
 by the practice ; and according to my recollection of the practice a 
 patent three vears old would not be sufficient where it is disputed." 
 (Griff. 148 ; 1 0. B. 114, at p. 115.) 
 
 (v) Briggs v. Lardeur. [1884] 
 
 In an action for infringement if the patent is, on the face of it, 
 ^o hopelessly and irretrievably bad that it is absolutely impossible 
 that it could be supported, the Court will consider before granting 
 an interim injunction, but where a patent has not been challenged 
 for ten years, the Court ought to assume for the purposes of a motion 
 for an interim injunction that the patent is a good patent ; leaving 
 it open till the case comes on for trial to determine that the patent 
 is as bad a patent as -was ever taken out. (Griff. 55 ; 1 0. B. 126.) 
 There was an appeal, but owing to a settlement it was not heard. 
 (1 0. B. 192.) 
 
 (tc) EoTHWELL V. King. [1886] 
 
 Bristowe, V.-C. (citing Davenport v. Jepsori) : " "Where there 
 has been long enjoyment (in that case it was nine years), the 
 Court will not refuse an interlociitory injunction merely on the 
 ground that the defendant if ultimately successful will have been 
 more injured by its being granted than the plaintiffs by its not 
 having been granted." User for six years held sufficient where 
 there had been no action fought, but the plaintiffs had on four 
 different occasions induced people -to discontinue infringing. 
 (3 0. B. 379, at p. 380.) , 
 
 .(x) British Tanning •Company v. Geoth. [1889] 
 
 The plaintiffs owned a patent two years old for improved appa- 
 ratus for tanning by aid of electricity, and moved for an interim 
 
Injunction — Threats of or actual Infringement must he Shown. 345 
 
 injunction against the defendant who was working a subsequent 
 patent for the same purpose. The defendant denied the validity 
 of the plaintiffs' patent, and alleged that the patentees had entered 
 into an agreement with him not to oppose any company formed 
 to purchase his invention. Held, that as the patent was of recent 
 date, and it was not clear that the processes were identical, and 
 having regard to the agreement, although the defendant refused to 
 undertake to keep an account, no order should be made, except 
 that the motion stand to the trial. (7 0. B. 1.) 
 
 Injunction — Threats of or actual Infringement must he shown. 
 
 (y) Hill v. Thompson. [1817] 
 
 Lord Eldon, L.C. : " The affidavits in support of the injunction 
 represent, that the defendants have made iron in the way men- 
 tioned in the specifioation. But, whether it is to be considered as 
 a patent for extracting iron from slags or cinders, by working and 
 smelting, and by the admixture of certain materials", to reduce the 
 percentage to 40 per cent., or for mixing cinders, limestone, and 
 mine rubbish in certain proportions ; it should, before any injunc- 
 tion was granted, have been pointed out that the patent was 
 actually infringed by so mixing the ingredients, or so reducing 
 the percentage." (3 Mer. 625.) 
 
 (z) Wood v. Cockerell. [1819] 
 
 Per Lord Eldon : " Where there is one question whether a patent 
 is valid, and another question whether it has been infringed, the 
 Court of Chancery would be going a great way if it took upon 
 itself to grant an. injunction." (2 Coop. 58 («.).) 
 
 (a) Abbott v. Williams. [1837] 
 
 A party will be restrained from selling an article in such a 
 state that it may be applied by others so as to infringe a patent, 
 though they may not be restrained from applying it themselves to 
 a different purpose, (9 Bep, Arts, 103.) 
 
 (h) Lose v. Hagoe. [1837] 
 
 An injunction being applied for, it is not sufficient for the 
 defendant to admit the infringement and promise not to repeat it, 
 the plaintiff is still entitled to an injunction. (1 Web. P. C. 200.) 
 
 (c) Datenpoet v. Richaeds. [1860] 
 
 Where there is a prima facie case of infringement of a patent, the 
 length of time, which the patent has been enjoyed by the p.atentee 
 will influence the Court in granting an injunction against the 
 parties who are alleged so to have infringed upon the patentee's 
 rights. (3 L. T. Bep., N. S. 608.) 
 
 ■(d) Neelson v. Betts. H. L. [1871] 
 
 Where an alleged piracy has taken place abroad it becomes the 
 duty of the defendant to give evidence of a negative character to 
 prove (in answer to the prima facie case made by the patentee) 
 
346 PEACTICE : 
 
 that the process used, was of a different character from that which 
 had been patented. Where that negative evidence was not given 
 by the delendant, but positive evidence on the part of the patentee 
 was given by one workman that he had been employed at the 
 foreign manufactory, and there saw the capsules manufactured by 
 a process not distinguishable from that of the patentee : — Held, 
 that these circumstances justified the conclusion of identity of 
 material and process, and were sufficient warrant for the grant of 
 injunction, (/v. ij., 6 jEf. L. 1.) 
 
 (e) BeTTS v. WlLLMOTT. [1871] 
 
 In a suit to restrain the sale of a patented article, it is incumbent 
 on the plaintiff not only to prove the sale, but to pi-ove that the 
 article was not made by himself or his agents. {L. B., 6 Gh. 239 ; 
 r9 W. B. 369.) 
 
 (/) Shillito v. Larmuth. [1884] 
 
 Where the patent was ten years old, and was therefore for the 
 purposes of the motion assumed to be good : — Held, by Bristowe, 
 V.-C, that the plaintiff need only satisfy the Court for the pur- 
 poses of the interlocutory application that there is a prima facie 
 case as regards the infringement which it is alleged will be proved 
 at the trial. (2 0. B. 1.) 
 
 (</) Peoctor v. Bailey and Son. C. A. [1889] 
 
 Machines which had been held in the case of Proctor v. Bennis 
 to be an infringement of the plaintiff's patent, which had been 
 held valid, were put up by Bennis. on the defendants' premises in 
 1882, on the terms that they were to be paid for only it successful. 
 Their use was discontinued after a few months as they were not 
 successful, and Bennis was asked to take them away but did not 
 do so until 1885. Bristowe, V.-(J., held that there had been 
 infringement, and that although there was no threat to continue 
 it, the plaintiff was entitled to an injunction in aid of his legal 
 rights. Held, by the Court of Appeal, that although the defendants 
 had denied in their defence that what they had done was within 
 the scope of the plaintiff's patent, yet that as it was impossible in 
 the face of the other facts in the case to infer from this that the 
 defendants had any intention to continue infringing, an injunction 
 could not be granted, and that as the Palatine Court had ouly 
 power to grant damages in a case where it was proper to grant an 
 injunction, there was no jurisdiction, and the action must be dis- 
 missed. (6 0. B. 106, 638.) [But now see 53 & 64 Vict. c. 23 s. 3.] 
 
 Practice — Injunction — Delay and Acquiescence, 
 (li) LosH V. Hague. [1837] 
 
 Sir L. Shadwell, V.-C. : " On the 23rd of March, the plaintiff 
 received some information that there was an evasion of his patent, 
 and some portion of time it appears was spent in making inquiries ; 
 there was notice given distinctly on the 8th of May. Then some 
 
Injunction — Delay and Acquiescence. 347 
 
 further correspondence takes plane, and letters between the parties ; 
 and then a bill is filed, on the 7th of July, and the application is 
 virtually made. I cannot but think, therefore, that the plaintiff 
 has come in sufficient time." (1 Weh. P. G. 201.) 
 
 («■) Bacon v. Jones. [1839] 
 
 The plaintiff knew of the alleged infringement in August, 1835, 
 but did not apply for an injunction till 1839. The Court lefused 
 to grant an injunction or to retain the bill. (4 My. & Gr. 438.) 
 
 Lord Cottenham, L. C, said: "It is no trifling grievance to a 
 defendant to have a chancery suit hanging over him for four years, 
 in which, if the Court shall so determine at the hearing, he will 
 have to account for all the profits he has been making during the 
 inteiniediafe period. Is a defendant to be subject to this annoy- 
 ance without any absolute necessity, or even any proportionate 
 advantage to his adversary, and without that adversary being 
 able to show any reason why he did not apply at an earlier time ? " 
 {Ih. 439.) 
 
 (J) Beidson v. Benecke. [1849] 
 
 A special injunction, on notice, to prevent the infringement of a 
 patent refused, on the ground of delay, notwithstanding the 
 plaintiff's long enjoyment under the patent, and the est'tblishing 
 of its validity in an action against another party. The plaintiff 
 discovered the infringement in January, but did not file his bill 
 till the following December. (12 Beav. 1.) 
 
 Lord Langdale, M.H., said: " I think that a party coming for 
 the assistance of this Court to protect a legal right, not absolutely 
 established, against the party who is alleged to have infringed it, 
 ought to come at an early period. I do not say, at the earliest 
 possible period, because that would be putting an application for 
 an injunction on notice, where all parties have an opportunity of 
 being heard, in the same condition as an injunction ex parte, ■which 
 it would not be expedient to do. The rule of this Court is very 
 strict, that you must apply in proper time." {lb. 3.) 
 
 (h) Baxter v. Combe. Ir. Ch. [1850] 
 
 Delay in filing the bill is a ground for refusing the injunction. 
 
 Where the patent was obtained in 1846, the alleged infringe- 
 ment of it took place in 1847, and the bill was not filed for more 
 than two years afterwards, the injunction was refused. (1 Ir. 
 Ch. B. 284.) 
 
 (J) Hancock v. Moulton. [1852] 
 
 A patentee is not bound to bring actions in respect of every 
 infringement, but in order to support an injunction against an 
 infringer, who has been permitted to go on for some time, and 
 against whom no action has been brought, distinct notice ought 
 to be given to him that the patentees would seek to enforce their 
 right. (Jf. Big. 606.) 
 
348 . PEACTICE: 
 
 (m) Nkwall v. Wilson. [1852] 
 
 A patentee does not acquiesce in the infringement of his patent 
 by omitting to proceed hy scire facias to set aside a subsequent 
 patent extending to part of his invention, unless such subsequent 
 patent is put in practice. (2 De O., M. & Q. 282.) 
 
 (ra) Smith v. The London and South "Western Eailway Company. 
 [1864] 
 
 The owners of a patent for a peculiar mode of manufacturing 
 iron wheels for railway carriages, having discovered that seveial 
 railway companies were violating their patent, brought an action 
 for damages against one of such companies <mly, but did not in 
 any way give notice to the other companies to discontinue their 
 infringements of the plaintiffs' right. In the action, the validity 
 of the patent was disputed, and it was not decided until three 
 years after the patent had expired, when a verdict was given for 
 Tthe plaintiffs, with large damages. Thereupon, the plaintiffs filed 
 a bill for an account of profits, and an injunction against another 
 of the companies who had infringed their patent, complaining of 
 acts done nine years before : — Meld, that the delay was not excused 
 by the pendency of the action, but was fatal to the plaintiffs' case. 
 {Kay, 408.) 
 
 ,{o) BoviLL V. Crate. [1865] 
 
 Where an interlocutory injunction to restrain infringement of 
 a patent was moved for in a suit in which the bill was filed in 
 July, and it appeared that the plaintiff wrote complaining of 
 the infringement in the preceding November, and knew of the 
 defendant's proceedings in the previous August, the injunction 
 was refused on the ground of delay. (L. B,., 1 Eq. 388). 
 
 ,(p) Osmond v. Hirst. [1885] 
 
 On a motion for an interlocutory injunction to restrain infringe- 
 ment in 1885, it appeared that the defendants manufactured under 
 a patent dated 1882 : — Held, that as the defendants might have 
 cross-examined the plaintiff or proved aliunde that he stood by and 
 suffered the defendants' patent to be worked, there had been no 
 laches shown on the part of the plaintiff. (Griff. 179 ; 2 0. B. 
 265.) 
 
 (5) Read v. Andrew. [1885] 
 
 On an application for an interlocutory injunction it appeared 
 from the plaintiffs' affidavits that the defendants had taken over 
 the business of John Andrew and Company, who were supplied by 
 the plaintiffs with the patented preparations in 1873, and had 
 uesed these preparations since that date : — Reld, no ground for 
 refusing an interlocutory injunction. {Griff. 201 ; 2 0. B. 119.) 
 
 (r) Greer v. Bristol Tanning Company. [1885] 
 
 The plaintiffs commenced an action for infringement, and on 
 December 2nd moved for leave to serve notice of motion, and for 
 
Injimetion — Expired Patents. 34^ 
 
 an interim injunction : — Seld, that as they had had evidence of 
 infrijigement on November 13th, and had not applied at once the 
 interim injunction ex parte must be refused. (2 O. B. 268.) 
 
 (s) Thomson v. Batty. [1888] 
 
 The plaintiff discovered in 1885 that the defendant, a nautical 
 instrument maker, was making and advertising a compass card 
 alleged to be an infringement of the plaintiff's patent. Corre- 
 spondence ensued, but proceedings were not actuallj'- t^ken until 
 1888, the plaintiff saying that he was not previously aware of 
 actual sales by the defendant. An interim injunction was refused 
 on the ground of delay, the costs being reserved. (4 T. L. Bep. 36.) 
 At the hearing it turned out that the plaintiff had known of this 
 infringement for. over two years: — Held, by Kekewich, J., that, 
 nevertheless, aB the plaintiff was successful in the action the costs 
 of the application should be costs in the cause. (6 0. B. 84.) ' 
 
 (f') United Telephone Company v. Equitable Telephone Company 
 [1888] 
 
 The Equitable Telephone Company had written to the plaintiffs 
 in February 1887, saying that they intended to manufacture 
 and sell the S. telephone, and inviting the plaintiffs to contest 
 tlieir right to do so. The plaintiffs took no notice until March 
 1888, when they commenced an action, and explained the delay 
 by saying that their solicitors advised them not to bring an action 
 until the defendants had a substantial capital and were stilling the 
 telephone : — Held, that the delay did not disentitle them to an 
 interlocutory injunction. (5 0. B. 233.) 
 
 Practice — Injunction — Expired Patents. 
 
 (u) Crossley v. Beverley. [1829] 
 
 Injunction granted generally to restrain the sale, both before 
 and .after the term limited by the patent, of machines piratically 
 manufactured while the patent was in force. (1 B. & M. 166 ; 
 1 Web. P. a 119.) 
 
 (v) Ceossley v. The Derby Gas Light Company. [1834] 
 
 Although a patent has expired, the Court will grant an in- 
 junction to restrain the sale of articles manufactured in fraud of 
 that patent previous to its expiration. (4 L. J., Gh. 25.) 
 
 ()«) Price's Patent Candle Company v. Bauwen's Patent Candle 
 Company. [1858] 
 
 On the 28th of November, 1856, the plaintiffs filed a bill for an 
 injunction to restrain the defendants from infringing their patent. 
 On the 10th of December the motion was heard, and ordered to 
 stand over until the hearing, the plaintiffs to bring an actibn. 
 At the heaving it appeared that the plaintiffs had obtained a 
 verdict, and the defendants admitted that, down to the 8th of 
 December, they had used the plaintiffs' patent process, but denied 
 that they now had in their .possession any candles or substances 
 
350 PEACTICE: 
 
 of which the bill sought to have an account : — 3eld, that, under 
 these circumstances, the Court could not grant an injunction, and 
 consequently could not decree an account. (4 K. & J. 727.) 
 
 (a;) Daw v. Eley. [1867] 
 
 A. obtained, in a suit against B. for infringement, a decree by 
 ■which tlie validity of the patent was declared, and an injunction 
 was granted to restrain infringement. Upon motion to commit B. 
 for breach of the injunction : — Held, that it was open to B., in 
 answer to the motion to commit, to show that, the patent having 
 been determined, there was no longer any order of the Court in 
 existence which he could be said to have infringed. (L. B., 3 Eq. 
 496 ; 36 L. J., Oh. 482.) 
 
 Procedure on Application for Injunction. 
 
 (y) Bacon v. Jones. [1839] 
 
 A patentee having filed a bill to restrain an alleged infringe- 
 ment, made no interlocutory application for an injunction, but 
 went into evidence in support of his case, and brought the cause to 
 a hearing. The Master of the Eolls, being of opinion that the 
 plaintiff, upon the evidence, had not made out a case which would 
 have supported an injunction if applied for in the inteTlocutory 
 stage, refused to give him an opportunity of establishing his 
 title at law, and dismissed the bill with costs ; and the Lord 
 Chancellor, on appeal, affirmed this decision. (4 My. & Gr. 433.) 
 
 (z) Bacon v. Spottiswoode. [1889] 
 
 Where a bill is filed by a patentee for an injunction to restrain 
 an alleged infringement of his patent, the plaintiff is not precluded 
 from asking for an injunction at the hearing b}' the fact of his not 
 having applied for it on an interlocutory motion ; but the not 
 moving for the injunction imposes on the plaintiff, in such a case, 
 the obligation of making out a clear and unexceptional title at the 
 hearing ; and if he fails in that, and has not previously obtained an 
 injunction, he will not be allowed to use the facts proved in the 
 cause as evidence of a prima facie case, giving him a right to 
 further time, for the purpose of enabling him to establish more 
 satisfactorily his legal title. (1 Beav. 382.) 
 
 (a) Beidson v. M'Alpine. [1845] 
 
 Lord Langdale, M.E. : " Where an injunction is asked to 
 restrain the infringement of a patent, the Court has occasion to 
 consider^ — filrst, the validity of the patent ; and, secondly, the fact 
 of the infringement. Where those two facts are established, it is 
 within the power, as it is the duty of the Court, to grant the 
 injunction." 
 
 " According to the doubt which may exist in the mind of the 
 Court upon the facts, and, according to the degree of incon- 
 venience to the parties, the Court, not thinking fit to grant the 
 injunction at the time, may take one of several courses: it may 
 either refuse to grant the injunction simply, or it may refuse it on 
 
Injunction — Order. 351 
 
 fhe terms of the party undertaking to keep an account, or it may 
 direct the motion to stand over, on the terms of the plaintiff 
 proceeding to a trial at law. When it has been determined tliat 
 the plaintiff must fir^t est>iblish his right at law, the Court does 
 not generally interfere with the mode of trying the legal question, 
 though in some instances it may require the parties to make the 
 necessary admissions of facts to facilitate the trial. It is to be 
 remembered that the proceeding is not like the trial of an issue, 
 but an action in the ordinary form, with which, generally speaking, 
 the Court will not interfere until the legal right has been 
 determined at law. I must, however, qualif}' this by saying that, 
 in cases of overwhelming mischief, this Court has authoiity to 
 interfere at any time." (8 Beav. 230.) 
 
 (h) Stevens v. Keating. [1847] 
 
 When the Court grants an injunction, the order ought not 
 merely to direct that an action shall forthwith be brought, with 
 liberty to the parties to apply in case of delay, but to give such 
 directions of its own, in the first instance, as will insure the speedy 
 trial of thw action. An injunction gi anted pending an action to be 
 brought by the plaintiff, for the speedy trial of which special 
 direotiiins were given, was dissolved on the ground of the plaintiff 
 not having duly complied with those directions. The plaintiff to 
 keep an account. (2 Ph. 333.) 
 
 (c) The Patent Type Foonding Company v. Walter. [1860] 
 
 Sir W. Page Wood, V.-C. : " With respect to obtaining a 
 perpetual injunction, the rule is established by Bacon v. Jones, that 
 in patent cases, unless the plaintiff takes steps to bring the matter 
 before the Court by motion befoie the hearing, he will not, in 
 general, be entitled to a perpetual injunction at the hearing. He 
 is therefore not at liberty to wait for the hearing, but the Court 
 requires him to place the matter in course of investigation at the 
 earliest possible period." (John, 730.) 
 
 (d) Mayee v. Firth. [1860] 
 
 In a suit for an injunction to restrain the defendants from in- 
 fringing the plaintiff's patent, and for an account, &c., the plaintiff 
 may move to proceed with an action at law to try the right, on a 
 proper af&davit, without previously moving for an injunction. 
 (2 L. T. Sep., N. S. 536.) 
 
 Practice — Injunction — Order. 
 
 (e) Betts v. De Vitee. [1865] 
 
 See this case as modified on appeal for form of order for a perpetual 
 injunction to restrain defendants from further infringement of a 
 patent ; as to costs personally against directors of a limited liability 
 company, and as to accounts and inquiries to ascertain damages sus- 
 tained by a patentee in consequence of the infringement of a patent. 
 (12 L. T. Bep., N. S. 51.) 
 
352 PEACTICE : 
 
 (/) MuREiY V. Clayton. [1872] 
 
 The plaintiff was patentee of a brick-making maclbiue. The 
 defendants patented another machine, which was held by the 
 Lords Justices, overruling the decision of the Vice-Chancellor, 
 to be an infringement of the plaintiff's patent on the ground that 
 the plaintiff's machine was entitled to protection as a new and 
 useful combination of well known parts. By the terms of the 
 order the defendants were restrained from selling any machines 
 similar to those of the plaintiff and generally from imitating the 
 plaintiff's invention, " or any part thereof or making any addition 
 thereto or subtraction therefrom." The defendants shortly after- 
 wards patented a new invention, in which many of the parts of 
 the plaintiff's machine were used, but which did not present all the 
 distinctive features of it nor exactly the same combination : — 
 Held (on a motion by the plaintiff' to commit the defendants for 
 breach of the injunction), that the order for an injunction must be 
 taken with reference to the pleadings, and the allegations in the 
 bill, and that the defendants' last patent was not within the 
 meaning of the order, but that, as there had not been strict com- 
 pliance with the order in the other instances brought forward 
 against the defendants, no costs should be given him. AiErmed on 
 appeal. (21 W. B. 498.) 
 
 {g) United Telephone Company v. Taskek. C. A. [1888] 
 
 The defendants opposed an injunction on the ground that the 
 plaintiffs had broken a contract to supply the defendants with 
 telephones. Kay, J., granted an injunction on the plaintiffs 
 undertaking to supply the defendants with telephones in place 
 of those which they were prevented from using. The defendants 
 had admitted using fifty-two. Subsequently the defendants said 
 that they found they had forty-four more telephones in use, and 
 asked to be supplied with others in place of those : — Held, that the 
 undertaking must be limited to the fifty-two, which number was 
 in the minds of the parties at the time. (5 0. B. 628.) 
 
 (li) Spencer v. Ancoats Vale Eubbee Company. C. A. [1888] 
 
 Where an injunction is granted by consent, the order should 
 state that it was by consent. (6 0. B. 56.) 
 
 (h*) Thomson v. Hughes. [1890] 
 
 The defendants admitted that they sold compass cards called the 
 Hughes compass cards, but denied that they sold the Moore 
 compass cards, but as the latter had been decided ±o be an in- 
 fringement of the ' plaintiff's patent, on a motion for an interim 
 injunction, they undertook not to sell the Moore compass cards, 
 and to keep an account of the Hughes cards sold by them. The 
 plaintiff having discovered that defendant was selling a third 
 card called the Paget card, which apjieared to be practically the 
 same as the Moore card, again moved for an interim injunction : — 
 Held, that the effect of the undertaking was the same as of an 
 injunction, and that the defendant ought not to have sold the 
 
Venue. 353 
 
 Paget cards, but that on the balance of convenience, as tbe plaintiff 
 could be completely recompensed by damages, whereas the 
 defendant could not be, in case it turned out that the Paget 
 cards were not an infringement, an interim injunction should 
 not be granted, but that defendants must undertake to keep an 
 account. (7 0. B. 71.) 
 
 Practice — Yenue. 
 
 («■) Camekon v. G-ray. [1795] 
 
 A plaintiff cannot make an affidavit that the cause of action, in 
 a case for the infringement of a patent, arose wholly in any par- 
 ticular county and not elsewhere, since the substratum of the 
 action, namely, the patent, is at Westminster. (6 T. B. 363.) 
 
 (y) Beunton v. White. [1825] 
 
 On a motion to change the venue, in a case for infringement, 
 the Court said there was no precedent for the application, and 
 that unless some instance was cited in which it had been done 
 they could not grant the motion. Eule refused. (7 T>. & B. 103.) 
 
 {Jc) Speckhaet v. Campbell Achnach and Company. [1884] 
 
 Action for an injunction against a defendant, resident in Scot- 
 land, to restrain infringements by posting articles made according 
 to the patent from Scotland for sale in England. Leave given to 
 serve the writ out of the jurisdiction. (PF. N. 1884, p. 24.) 
 
 (I) Pairburn v. Household. [1885] 
 
 An action for infringement having been commenced in the Chan- 
 cery Division, place of trial Manchester, Manisty, J., made an 
 order at Manchester that it should be tried before Kay, J., in 
 London, but it was discharged on appeal. (^Griff. 96 ; 2 0. iJ. 195.) 
 
 (m) Edmunds' Patent. [1889] 
 
 On a petition for revocation it appeared that the petitioners and 
 their principal witnesses and the machinery were at Birmingham, 
 and North, J., ordered the petition to be tried at Birmingham 
 Assizes. (The order was drawn up wrongly that the issue of fact 
 only was to be so tried.) (6 0. B. 355.) 
 
 Practice — Postponement of Trial. 
 (mP) Smith v. Upton. [1843] 
 
 The trial of an action for infringement was postponed pending 
 the trial of a sci. fac. to repeal the patent. (6 M. & O. 251.) 
 
 (n) Mdntz v. Poster. [1 844] 
 
 Action brought on the 21st July, and cause set down for trial. 
 A writ of scire facias to repeal the patent issued on the 3rd of May, 
 at the inBtanoe of one of the defendants. In the ordinary course, 
 the cause would have first come on for trial. The Court refused to 
 order that the trial of the cause should be postponed until after 
 the scire facias had been determined. (2 Web. P. G. 93, (m.).) 
 
 2 A 
 
354 PEACTICE : 
 
 (o) Patteson v. Holland. [1845] 
 
 Where one action for infringement had been tried, and a rule 
 nisi for a new trial had been obtained and argued, and another 
 action was pending for another infringement of the same patent, 
 and a scire facias had been sued out to repeal the patent, the Court 
 suspended their judgment upon the rule for a new trial, and ordered 
 the trial of the other action to be postponed until after the trial of 
 the scire facias. (Kind, on Pat. 293.) 
 
 Practice — Trial of Questions of Law and Fact. 
 
 (p) Spencer v. Jack. [1862] 
 
 In a suit instituted to restrain an infringement, an issue was 
 directed, as to the novelty of the plaintiff's " invention." On the 
 defendant's motion, for this issue was substituted one, as to the 
 novelty of the plaintiff's " invention or manufacture." On appeal it 
 was directed, that the question of novelty should be tried on two 
 separate and distinct issues ; one, as to whether the plaintiff's im- 
 provements constituted a new invention ; the other, whether it con- 
 stituted a new manufacture. (3 De G., J. & S. 346.) 
 
 (g) Davenport v. Jepson. [1862] 
 
 A defendant is entitled to have the question of the validity of 
 the patent raised, even on an interlocutory motion. (1 N. B. 
 178.) 
 
 (r) Needham v. Oxley. [1863] 
 
 On the trial of issues in a patent case, the Court will allow an 
 issue to go to the jury, for the purpose of raising, as a question of 
 fact, the point whether there is a substantial variance as between 
 the complete and the provisional specification. (8 L. T. Bep., 
 N. S. 532.) 
 
 (s) Young v. Feenie. [1863] 
 
 In order to bring a case within the proviso contained in the 
 25 & 26 Vict. c. 42, s. 2, authorizing the Court of Chancery, not- 
 withstanding the Act, whenever it shall appear that a question of 
 fact may be more conveniently tried by a jury at the assizes, or at 
 any sitting in London or Middlesex for the trial of issues in the 
 Superior Courts of Common Law, to direct such trial, the Court of 
 Chancery must be satisfied that the administration of justice in the 
 particular case may be more conveniently exercised and promoted 
 by directing such issues, than by completing the hearing and the 
 inquiry before itself. (1 De O., J. d S. 353 ; 9 X. T. Bep., N. S. 
 590.) 
 
 (t) Curtis v. Platt. [1864] 
 
 The practice introduced into Chancery of having separate issues 
 is not peremptory, and must be regarded as nothing more than a 
 convenient mode of arranging tho questions to be decided by the 
 Court. (11 L. T. Bep., N. 8. 250.) 
 
Trial of Questions of Law and Foot. 355 
 
 (m) Penn v. Jack. [1866] 
 
 Upon the trial of issues in a patent case the plaintiff is entitled 
 to call evidence in reply, for the purpose of rebutting a case of 
 prior user set up by the defendant. But after the evidence for the 
 defence has been summed up, the defendant will not be allowed to 
 adduce further evidence in answer to that given by the plaintiff in 
 reply. (L. B., 2 Eq. 314 ; 14 L. T. Bep., N. S. 495.) 
 
 («) Morgan v. Fuller. [1866] 
 
 A defendant was not allowed to add a totally new issue of fact 
 not in any way suggested by his answer to the issues which had 
 been already directed for trial. (L. B., 2 Eq.. 296.) 
 
 (w) BOVILL V. GrOODIBR. [1866] 
 
 After a patentee had established his patent as against one 
 person at law, he instituted proceedings for an infringement 
 against another in equitj'. The Court granted the defendant an 
 issue as to the novelty of the invention, but refused it as to the 
 utility of the invention and the sufiSciency of the specification, 
 holding that the utility was not contested, or had been proved 
 in the suit, and that the sufficiency of the specification had been 
 already decided in the action at law, a decision in which this 
 Court, so far as it was matter of law not depending on the 
 novelty of the invention, concurred. (L. B., 2 Eq. 195 ; 35 Beav. 
 427.) 
 
 (a) Fernie v. Young. H. L. [1866] 
 
 Lord Westbury : " In the procedure of Chancery, according to 
 the old practice, these rules were established. If, in the evidence 
 given before the Court, or in the proceedings before the Court, there 
 arose a considerable controversy upon a question of fact, it was 
 usual for the Court of Chancery to direct an issue to be tried before 
 a jury at common law for the purpose of informing itself in what 
 manner that question of fact ought to be answered ; but when 
 the proceedings before the Court of Chancery involved a mixed 
 question of law and fact, then it did not direct an issue, but it 
 directed an action, or it retained the bill in order that an action 
 might be brought, for the purpose of having the assistance of a 
 Court of law both upon the question of fact by means of a jury 
 and upon the question of law by means of the Court. A third 
 description of cases was this, namely, where relief was sought in 
 equity founded entirely upon a legal title, and then, where the 
 legal title had not been established by the decision of a Court of 
 law, it was the habit of the Court of Chancery to direct the bill to 
 be retained, with liberty to the plaintiff ^o bring an action to 
 establish his title ; and sijch in the case of a bill brought by a 
 patentee for relief in a Court of Chancery was the settled rule of 
 procedure, with the exception perhaps only of cases where the 
 patent was of such age and had been so generally recognized and 
 submitted to by the world that the Court of Chancery did not 
 require that its legal validity should first be established." 
 
 2 A 2 
 
356 PEACTICE : 
 
 Now it appeared " desirable to make the Court of Cliaiicery selfj 
 sufficient, and enable itself to try, by the aid of a jury, and by the 
 oral examination of witnesses, all questions arising before it both 
 of law and fact. Accordingly, by the Chancery Amendment Act, 
 1868, in the 3rd sect., power was given to the Court to direct any 
 question of fact to be tried by a jury before itself; and then, in 
 another section, the Court was enipowered to dispense with the 
 jury and itself to try the question of fact. This power given to 
 the Court was converted into an obligation by the Act of 1862, 
 and extended to questions of law as well as to questions of fact. 
 It is quite clear, therefore, that the procedure to be adopted 
 under these statutes would, in the case of a patent, be analogous 
 to, and altogether usurp the place of, the old mode of procedure 
 which would have been adopted under the former practice." (L. B., 
 1 H. L. 78.) 
 
 (?/) Hoffmann v. Postxll. [1868] 
 
 V.-C. Giffard intimated that in future he should treat the 
 hearing of issues in patent cases as the hearing of the cause, 
 and would not advance them before the cases in the paper, 
 except upon a special case made. (19 L. T. Bep., N. S. 276.) 
 
 («) Henderson v. Euncoen Soap and Alkali Company. [1868] 
 
 A trial of issues will not be granted at the request of the 
 defendant when opposed by the plaintiff. (19 L. T. Bep., N. S. 277.) 
 
 (a) Arnold v. Bradbury. [1871] 
 
 The usual issues may be granted in a patent suit before the 
 hearing of the cause, although the defendant denies the validity of 
 the patent on the ground of the generality of the claim in the 
 specification, (i. B., 6 Ch. 706, reversing 24 L. T. Bep., N. S. 613.) 
 
 (6) Hutchison v. Pattullo. [1888] ' 
 
 In an action for infringement, the validity of the patent being 
 challenged on the ground that the complete went beyond the 
 provisional specification and on other grounds, the Lord Ordinary 
 decided to have the objections on the construction argued as a 
 point of law without hearing evidence as to the rest of the case 
 and held the patent bad (4 0. B. 329) : — Seld, by the Inner House, 
 that the Lord Ordinary was wrong, and the case was remitted to 
 him to proceed in the ordinary way. (5 0. B. 351.) 
 
 Practice — Bight to a Jury. 
 
 [By Patents Act, 1883, sect. 28, an action or proceeding for infringement 
 or revocation of a patent shall be tried without a jury unless the Court shall 
 otherwise direct. See p. 65.] 
 
 (c) Needham v. Oxi,ey. [1863] 
 
 When questions of fact are determined by a special jury before 
 the Court of Chancery itself, it is not necessary to certify, under 
 21 & 22 Vict. c. 27, for the special jury. (2 N. B. 388 ; S L. T. 
 Bep., N.S. 604.) 
 
Right to a Jury. 357 
 
 (d) Davenport v. Goldberg. [1865] 
 
 The defendant in a suit to restrain the infringement of a patent 
 has no right to have the issues of fact referred to a jury ex 
 dehito justitiBe ; and where the issues raised have been already 
 determined, such reference will in general be refused. But if it 
 appear that there is a really doubtful question at issue, the Court 
 will not decide it for itself, if either party desire a jury. (2 
 Hem. & M. 282.) 
 
 (e) Tanqye v. Stott. [1865] 
 
 Where the plaintiffs counsel in his opening made charges which 
 were not raised by the pleadings, and the defendant's counsel 
 thereupon asked for a jury, the application was acceded to, and 
 the cause ordered to stand over. (14 W. B. 128.) 
 
 (/) BoviLL V. Hitchcock. [1868] 
 
 The defendant to a bill for an injunction to protect a legal 
 right cannot ex dehito justitiae require to have such right tried 
 by a jury ; for the Court, before the statutes 21 & 22 Vict. c. 27, 
 and 25 & 26 Vict. c. 42, sent such cases to be tried at law, not 
 in order that they might be tried by a jury, but because the 
 Court, having no jurisdiction to try a legal right, required to 
 have the judgment of a Court of common law upon it. (i. B., 
 3 Ch. 417.) 
 
 (g) Patent Marine Inventions Company v. Chadburn. [1873] 
 
 In the absence of special circumstances the ordinary issues 
 in a patent suit will be tried before the Court itself without a 
 jury. (i. B., 16 Uq. 447; 21 W. B. 745; 28 L. T. Bep., N. S. 
 614.) 
 
 Qi) SnoG V. Silber. [1876] 
 
 Where the plaintiif gives notice of trial before a judge sitting 
 ■with assessors, the defendant had a right under Ord. XXXVI., r. 3, 
 by giving notice within the time specified, to insist on a trial 
 before a judge and jury. (1 Q. B. B. 362.) 
 
 [Now by Rules of Supreme Court, Order 36, Rule 5, the Court or a Judge 
 may direct the trial without a jury of any cause, matter, or issue requiring 
 any scientific investigation which cannot in their or his opinion conveniently 
 be made with a jury; and by Patents Act, 1883, sect. 28, an action or 
 proceeding for infriugement or revocation of a patent shall be tried without a 
 jury tmless the Court shall otherwise direct (p. 65).] 
 
 (J) American Braided Wire Company v. Thomson. [1888] 
 
 In an action for infringement, an inquiry as to damages having 
 been directed, the plaintiffs applied that it might be referred to a 
 judge and jury : — Held, that the Court had no power to order it. 
 On an appeal the parties agreed to a reference, and the Court 
 of Appeal declined to express an opinion on the point. (5 0. B. 
 538, 696.) 
 
358 PKACTICE : 
 
 Practice — Affidavits. 
 
 Patent Rules, 1890, rule 17. The statutory declarations required by the 
 said Acts and these Eules, or used in any proceedings thereunder, shall be 
 made and subscribeii as follows : — 
 
 (a.) In the United Kingdom, before any Justice of .the Peace, or any 
 commissioner or other officer authorised by law in any part of the 
 United Kingdom to administer an oath for the purpose of any 
 legal proceeding ; 
 (b.) In any other part of Her Majesty's dominions, before any Court, 
 Judge, Justice of the Peace, or any officer authorised by law to 
 administer an oath there for the purpose of a legal proceeding ; 
 and 
 (c.) If made out of Her Majesty's dominions, before a British Minister, 
 or person exercising the funolions of a British Minister, or a 
 consul, vice-consul, or other person exercising the functions of a 
 British Consul, or a notary public, or before a judge or magis- 
 trate. 
 17a. Statutory declarations and aftidavits shall be headed in the matter 
 or matters to which they relate. They shall he divided into paragraphs 
 consecutively numbered, and each paragraph shall so far as possible be con- 
 fined to one subject. 
 
 (j) Hill v. Thompson. [1817] 
 
 The affidavit in support of an injunction to restrain an infringe- 
 Inent should state particularly in what the alleged infringement 
 consists ; and when the proportions mentioned in the specification 
 are of the essence of the invention, it should state the defendant 
 to have worked by them. (3 Mer. 624.) 
 
 "When an injunction is applied for ex parte, it is incumbent on 
 the party making the application to swear, at the time of making 
 it, as to his belief, that he is the original inventor ; for, although, 
 when he obtained his patent, he might very honestly have sworn 
 as to his belief of such being the fact, yet circumstances may have 
 subsequently intervened, or information been communicated, 
 sufficient to convince him that it was not his own original 
 invention, and that he was under a mistake when he made his 
 previous declaration to that effect. (16.) 
 
 (h) Hill v. Wilkinson. [1817] 
 
 In the case of an alleged infringement of a patent, the in- 
 junction must be granted, or refused, according to the opinion 
 the Court may form after an examination of the affidavits. 
 (2 Coop. 57 («.).) 
 
 (Z) Sturtz v. Db la Eue. [1828] 
 
 Lord Lyndhurst, L.C. : " There can be no doubt that, when a 
 party comes for an injunction against the infringement of a patent, 
 he ought to state that he believes, at the time when he makes the 
 application, that the invention was new, or had never been 
 practised in this kingdom at the date of the patent. It is not 
 enough that it was believed to be new at the time when] the 
 patent was taken out." (5 Buss. 329.) 
 
Affidavits^ 359 
 
 (m) Lewis: «■. Marling. [1829} 
 
 New facts stated upon affidavit, whicli would be ground for 
 repealing a patent by scire facias, will not be received on a motion 
 for a new trial. (1 Weh. P. G. 495.) 
 
 (m) BiCKFOED V. Skewes. [1837] 
 
 Injunction granted althougb, on account of the patentee being 
 dead, there was no affidavit to the effect that he, at the time of 
 application, believed himself to be true and first inventor, and 
 that the invention was new. (1 Weh. P. C. 211.) 
 
 (o) Stocking v. Llewellyn. [1842] 
 
 If there is any material variation between the allegations in- 
 the Bill, or the aid sought by it, and the affidavits in support of 
 the plaintiff's case, the injunction will be dissolved, with costs. 
 (3 L. T. Bep. 33.) 
 
 (p) In re Stead's Patent. [1846] 
 
 Two petitions were presented, the second being supplementary 
 to, and stating what had taken place subsequent to the piesenta- 
 tion of, the first. The affidavits made by the petitioner in support 
 of the first petition, gave a general history of his invention, of the 
 communication from abroad on which it was founded, and of his 
 attempts to introduce it into this country ; and those in support 
 of the second petition stated the proceedings at law which had 
 taken place since presentation of the first petition, the publica- 
 tions adduced at the trial as impeaching the novelty of the 
 invention, and the title of the petitioner. The counsel for the 
 opponents objected to the affidavits being received as proof of the 
 matters contained in them, the intention being that suob affidavits 
 should be received in addition to other evidence, because the 
 applicant having made a good case might be the only person who 
 knew the real case : — Held, that the affidavits were required to 
 show that the petitioner believed certain facts to be true ; and 
 that the opponents could prove their own case by other evidence. 
 (2 Weh. P. a 143.) 
 
 (q) Electric Telegraph Company v. Nott. [1847] 
 
 The Court will, at any time previous to the hearing, postpone 
 the hearing, in order to allow time for filing affidavits ; but no 
 affidavits tiled after the hearing has begun may be read. 
 (11 Jur. 278.) 
 
 (r) Shaw v. ThkBank of England. [1852] 
 
 In an action for the infringement of a patent, the Court refused 
 to grant an order for inspection of a machine upon an affidavit 
 " that the machine used by the^ defendants is the ^ame for which 
 the plaintiff has obtained a patent." (22 L. J. Exch. 26.) 
 
 Pollock, C.B. : " The affidavit is too vague and defective for 
 the Court to grant this application. It ought, at least, to state 
 
360 PEACTICE : 
 
 that there is sucli a machine, and that the plaintiff has reason to 
 believe that it is an infringement." (lb.') 
 
 («) Gardner v. Broadbent. [1856] 
 
 A. B. in May, 1856, became the purchaser of a patent, which 
 the defendant, as alleged, infringed subsequent to tlie date of the 
 purchase. A. B. obtained an injunction ex parte to restrain the 
 defendant, on an affidavit in support, which stated that the 
 patent had been recorded, and that it became and was good and 
 valid. The Court held this affidavit insufficient, and on that 
 ground dissolved the injunction, with costs. (2 Jur., N. S. 1041.) 
 
 Sir J. Stuart, V.-C, said : " When the plaintiff applied for an 
 ex parte injunction, his affidavit ought to have stated clearly and 
 distinctly that he believed the patentee, from whom he purchased 
 the patent, was the original and true inventor, and that he 
 believed that the invention had not been practised at the time 
 when the patent was granted." {lb-} 
 
 (t) In re M'Kean's Patent. [1859] 
 
 Where a petition to have the great seal affixed to a patent had 
 been filed, and the respondents served with notice two months 
 before the first day of Michaelmas Term, for which day the 
 petition was answered, and the respondents only filed affidavits on 
 the morning of that day : — Held, that they could not be read ; 
 and the patent was ordered to be sealed. (1 De Q., F. d J. 2; 
 8 W. B.l; IL.T. Bep., N. S. 19.) 
 
 (m) Meadows v. Kiekman. [1860] 
 
 Order for inspection of defendant's machinery refused where 
 plaintiffs affidavit did not sufficiently ascertain the nature of the 
 invention infringed. (29 L. J. Exch. 205.) 
 
 («) Whitton v. Jennings. [1860] 
 
 When a defendant to a bill filed for an injunction to restrain 
 an infringement, or for leave to bring an action at law, stated 
 by his answer that the invention was not novel, and that the 
 plaintiff's patent was invalid, the Court, on a motion by the 
 plaintiff, without his having made an affidavit as to the novelty of 
 the invention or validity of the patent, refused to grant him an 
 injunction or to give leave to bring an action, unless he produced 
 a clear and distinct affidavit that the invention, was novel and 
 the patent valid, but allowed the motion to stand over for that 
 purpose. (1 Br. & S. 110.) 
 
 (w) Maybe v. Spence. [1860] 
 
 In an injunction suit to restrain an infringement, a motion for 
 leave to , take proceedings at law ordered to stand over for the 
 plaintiff to make an affidavit of his belief of his title to the patent, 
 and of the alleged infringement. (1 J. & H. 87.) 
 
 (a;) Betts v. Wilmot. [1871] 
 
 The onus being on the plaintiff to show not merely that the 
 
Evidence of Subject-matter of Patent. 361 
 
 thing made is Ms own patented article, but that it has heeu 
 unlawfully sold, he must be prepared to swear distinctly that 
 it is not manufactured by him or his agent. The onus is then 
 thrown upon the defendant. (L. B. 6 Gh. 239 ; 25 L. T., N. S. 
 
 188.) 
 
 (2/) MuREAY V. Clayton. [1873] 
 
 The defendant against whom an inquiry as to damages has 
 been granted, must make an affidavit as to the number of the 
 patented machines sold by him and the names and addresses of 
 the purchasers, (i. B. 15 Uq. 115.) 
 
 Practice — Evidence of the Subject-matter of a Patent, 
 {z) Lewis v. Davis. N. P. [1829] 
 
 In an action for the infringement of a patent, professing to be 
 an improvement on a former patent, the specification of the former 
 patent must be put in evidence, in order to show what the im- 
 provement really is. (1 Web. P. G. 489 ; 3 G. <& P. 602.) 
 
 (a) Bateman v. Gray. [1853] 
 
 Tn an action for infringing a patent, defendant pleaded only — 
 not guilty ; (2) a traverse that plaintiff was the inventor ; and 
 a traverse that the invention was new. At the trial, the 
 plaintiff put in the specification, which claimed three old things ; 
 but he proved, by his own evidence, that the invention which he 
 really claimed, and which he thought he had described in his 
 specification, was the combination of the three things : — Held, 
 that the specification was evidence for the jury, but not conclu- 
 sive ; and that they were warranted in finding that the invention 
 was the combination. (1 G. L. Bep. 512.) 
 
 PoUockj C. B., said : " We think that what was the invention is 
 a question for the jury, and that the specification does not con- 
 clude the plaintiff. It was evidence to be considered by the jury 
 and no more." (lb. 515.) 
 
 (6) Boyd v. Horeocks. C. A. [1889] 
 
 An example of a class of machines may, in order to explain 
 counsel's argument, be handed up and looked at although it is not 
 in evidence. (6 O. B. 162.) 
 
 Practice — Evidence of Novelty of Invention. 
 (c) Manton v. Manton. N. P. [1815] 
 
 Action for the infringement of a patent for a hammer for the 
 looks of fowling-pieces. 
 
 Gibbs, C.J., said to the jury : " The first witness, a man of con- 
 siderable experience, had never seen any locks with the lips so 
 perforated ; prima facie, that is good evidence ; but when the 
 question is, whether this had existence previous to the patent, fifty 
 witnesses proving that they never saw it before would be of no 
 
362 PEACTICE : 
 
 avail if one was called who had seen it and practised it." (Bav. 
 P. a 350.) 
 
 (d) E. «. Hadden. [1826] 
 
 On scire facias to repeal a patent for a machine, on the ground 
 that it is not new, you may, to prove that, put into the hand of a 
 witness, who had constructed a machine for the same purposes, a 
 drawing not made by himself, and ask him whether he has such a 
 recollection of the machine he made, as to be able to say that that 
 is a correct drawing of it. (2 C. & P. 184.) 
 
 (e) In re CnTLER's Patent. Ch. [1839] 
 
 The identity of purpose, and not of name, is the criterion in 
 judging of the similarity or dissimilarity of inventions. (1 Web. 
 P. a 427.) 
 
 (/) Galloway v. Bleaden. N. P. [1839] 
 
 It is only necessary for the plaintiff to make out a prima facie 
 lase as to the novelty of his invention, to call upon the other side 
 to show affirmatively that it is not new. This tbe plaintiff may do 
 by calling persons who are conversant with the subject of the 
 patent, and who pass their time in understanding the nature of 
 patents, and in following up and discovering what are the inven- 
 tions that are going on from week to week, to say that they had 
 not before heard that there had been such a discovery previous to 
 the grant of the patent. (1 Weh. P. G. 626.) 
 
 {g) Walton v. Potter. N. P. [1841] 
 
 Tindal, C.J., said to the jury : " It will be not immaterial to 
 call your attention, upon this first head of inquiry, to the specifi- 
 cation of the plaintiff's, and next that of the defendants' patent 
 in order that we may compare them together, and see whether 
 there really is that variation in substance so as to give the deno- 
 mination of a new discovery to what the defendants have done, or 
 whether they are not following out the invention of the plaintiff; 
 with some variation in the description, which may not allow it the 
 name of a new discovery." (1 Web. P. 0. 587.) 
 
 (h) Hyde v. Palmee. [1863] 
 
 In an action for the infringement of a patent taken out in 1849, 
 the defendant, in support of a plea that the invention was not new, 
 gave evidence that 0., who was dead, had in 1846 used a process 
 identical with that in the patent. On the cross-examination of the 
 witnesses it appeared that, if 0. used tbe invention and sold tbe 
 product before the date of the patent, it was only in very small 
 quantities, and that it was not brought into general use ; and one 
 of the witnesses was asked in cross-examination whether 0. had not 
 sold some of the product to S., and said he had. The plaintiff in 
 reply called S., who gave evidence that in 1850 or 1851, sold him 
 a small quantity of the product, and at the time of the sale said 
 that it was a new article, that he did not wish it to be publicly 
 
Evidence of Grant of Patent. 363 
 
 tnowb, and he wOuld sell Mm all he cotild mamifacture : — Held, 
 that evidence of what O. said at the time of that sale was not 
 admissible in reply, as it would not have been admissible in chief 
 on an issue whether 0., before 1849, used the invention. (3 B. & S. 
 667 : 11 W. B. 433 ; 1 L. T. Bep., N. S. 823 ; 32 L. J., Q. B. 126.) 
 
 (i) Betts v. Neilson. H. L. [1871] 
 
 Where a patent had been taken out by D. in 1804, and another 
 patent had been taken out by B. in 1849, and B. took proceedings 
 against N. for infringement, to which N. set up as an answer want 
 of novelty, and proved D.'s patent, evidence of all that was done 
 in the trade to which the patent related between the date of D.'s 
 patent and of B.'s patent, was admissible on this question of 
 novelty. (L. B., 5 H. L. 2.) 
 
 (J) Boyd v. Hoerocks. [1888] 
 
 In an action for infringement of a patent for improvements in 
 winding machines, the plaintiff applied after the evidence had been 
 closed, speeches delivered, and judgment reserved, to call further 
 evidence with regard to the date of certain changes in a machine 
 which had been alleged to be an anticipation of the plaintiff's : — ■ 
 Held, that the evidence was relevant to a main issue and should be 
 admitted. (5 0. B. 557.) 
 
 Practice — Evidence of the Grant of Letters Patent. 
 
 (7c) MiNTER V. Wells. N. P. [1834] 
 
 Alderson, B. : " The patent is prima facie evidence on the part 
 of the person who claims the right that he is so entitled, and it is 
 for the person who seeks to infringe that patent to show some 
 circumstance whereby that right, which otherwise would be pre- 
 sumed to exist, is defeated, to show that the Crown's grant has 
 been improperly obtained by the present plaintiff." (1 Web. P. G. 
 129.) 
 
 (V) EussELL V. CEiCHTOir. [1837] 
 
 Letters patent afford prima facie evidence of the originality of 
 the alleged invention. (1 Web. P. 0. 677 («.).) 
 
 (m) Nickels v. Eoss. [1849] 
 
 At the trial the plaintiff put in the letters patent and specifica- 
 tion, and gave evidence to show that a machine like his had never 
 been in use before the date of the letters patent : — Held, that this 
 entitled the plaintiff to a verdict upon the issue joined on the plea 
 of nan concessit. 
 
 Held, also, that the plaintiff was entitled to a verdict on the 
 issue joined on a plea, stating that the plaintiff had obtained the 
 patent on a false representation that he was in possession of the 
 invention in consequence of a communication from a foreigner 
 resident abroad, without any proof that the invention was com- 
 municated to him by a foreigner residing abroad, as alleged in the 
 petition recited in the specification, — a party availing himself of 
 
364 PEACTICE : 
 
 information from abroad, being an inventor within the meaning of 
 the 21 Jac. 1, o. 3, s. 6. (8 C. B. 679.) 
 
 Evidence of Sufficiency of the Specification. 
 
 (w) Turner v. Winter. [1787] 
 
 BuUer, J. : "I do not agree with the counsel who have argued 
 against the rule, in saying, that it was not necessary for the 
 plaintiff to give any evidence to show what the invention 
 was, and that the proof that the specification was improper lay 
 on the defendant ; for I hold that a plaintiff must give some 
 evidence to show what his invention was, unless the other side 
 admit that it has been tried and succeeds. But wherever the 
 patentee brings an action on his patent, if the novelty or effect of 
 the invention be disputed, he must show in what his invention 
 consists, and that he produced the effect proposed by the patent in 
 the manner specified. Slight evidence of this on his part is 
 suifioient, and it is then incumbent on the defendant to falsify the 
 specification." (1 T. B. 606.) 
 
 (o) E. V. TussELL. [1826] 
 
 The evidence of a scientific man, that to carry out an inven- 
 tion from the specification would require a great deal of con- 
 trivance, is, in the absence of evidence to the contrary, sufficient 
 proof of the insufficiency of the specification. (1 Carjp. P. 0. 449.) 
 
 (p) Brooks v. Eipley. [1831] 
 
 If the specification be not sufficiently clear to be understood 
 by an ordinary workman (a witness for the plaintiff), witnesses 
 ■will not be allowed to be called to explain the intention of the 
 patentees, and plaintiffs will be nonsuited. (2 Lond. Jour., C. S. 
 35.) 
 
 (3) MiNTER V. Wells. N. P. [1834] 
 
 Alderson, B. : " The plaintiff, in order to establish his right, 
 must show that the invention is new, and that it is useful, and 
 that the specification is such that an ordinary workman could 
 make the machine which would answer the purpose which the 
 patent was intended to accomplish." (1 Web. P. G. 129.) 
 
 (r) Cornish v. Keene. N. P. [1835] 
 
 Upon an action for infringement, the specification is proved 
 to be sufficient, if witnesses are called by the plaintiff, who have 
 actually made the manufacture without any instruction except 
 the specification ; and none are called by the defendant, who could 
 not understand the specification, had been misled by it, or incurred 
 expense in endeavouring to copy or to imitate it. (1 Web. P. C. 602.) 
 
 (s) E. V. Nickels. [About 1846] 
 
 Where, in a patent for machinery, the improvements are not 
 sufficiently ascertained or described either by words or figures, 
 parol evidence is not admissible to explain the specification and 
 show what is new. {Hind, Law of Pat. 186.) 
 
Evidence of Infringement. 365 
 
 (t) Young v. Pernie. Ch. [1864] 
 
 Experiments conducted for the express purpose of manufacturing 
 evidence, witli a view to litigation, are to be looked at with 
 distrust. (4 Giff. 609.) 
 
 (/i) Edison v. "Woodhouse. C. A. [1887] 
 
 If a workman says that a specification is a sufficient guide to 
 him, and the Court believes him, the Court must hold the specifi- 
 cation sufficient. (3 0. B. 183 ; 4 0. JR. 99.) 
 
 Evidence of Infringement. 
 (m) Huddaet v. Grimshaw. N. P. [1803] 
 
 Action for the infringement of a patent for a new mode of 
 making cables and other cordage. Evidence was given on behalf 
 of the plaintiff by an engineer, who was familiar with the subject 
 of rope-making, that some rope, proved to be of the defendant's 
 manufacture, agreed in its structure and in all its qualities with 
 the rope made by the plaintiff's patented method. The witness 
 knew of no other method of iaanufacturing such rope, which he 
 believed to have been made in accordance with the plaintiff's 
 patent : — Held, that this was prima, facie evidence, till the contrary 
 was shown, of an infringement of the plaintiff's patent. (Dav. 
 P. 0. 288 ; 1 Weh. P. G. 91.) 
 
 (v) Hall v. Boot. N. P. [1822] 
 
 The sale of an article which might, during its manufacture, 
 have been improved according to a patent process, coupled witli 
 the fact of the defendant having the machine necessary for 
 practising such process in his possession, is sufficient evidence of 
 infringement. (1 Web. P. G. 100.) 
 
 (w) MuNTZ V. Foster. N. P. [1844] 
 
 Tindal, C.J. : " Eor the purpose of inquiring whether the 
 defendants have infringed the patent or not, we are to assume that 
 it is a good patent, that no objection arises either to the nature of 
 the grant or the specification which has been enrolled by the 
 plaintiff." (2 Weh. P. G. 99.) 
 
 (x) Palmer v. Wagstaffe. [1864] 
 
 The plaintiffs patent, obtained for " the mode of manufacture of 
 candles by the application of two or more plaited wicks, so disposed 
 that the ends always turn outwards," is not proved to be infringed 
 by the mere production of a candle, made by the defendant, in 
 which the wicks were so plaited and turned outwards. It must 
 be further shown that the defendant made it by the method 
 described in the plaintiff's specification, or in some way that the 
 jury might consider colourable. (9 Ex. 494; 23 L. J., Ex. 217; 
 2 G. L. B. 1052.) 
 
 (y) Unwin v. Heath. H. L. [1856] 
 
 Crompton, J. : " Proof of a user of an invention before the 
 patent was granted, such as would be evidence that there was 
 
366 PEAOTICE : 
 
 no novelty, if taking place after the patent, is evidence of ah 
 infi-ingement." (25 L. J., G. P. 13.) 
 
 (2) Davenport v. Eichaeds. Ch. [1860] 
 
 Tlie fact that the articles made by the plaintiff's and defendant's 
 machines are identical, is a fair argument to show that an infi-inue- 
 ment of the plaintiff's patent has been committed. (3 L. T. Bep., 
 N. S. 604.) 
 
 (a) Seed v. Higgins. H. L. [1860] 
 
 The opinion of scientific witnesses as to whether there has or 
 not been an infringement ought not to be received. Per Lord 
 Wensleydale. (8 S. L. Oas. 550 ; 30 L. J., Q, B. 314 ; 6 Jur., 
 N. S. 1264.) 
 
 (6) Neilson v. Betts. H. L. [1871] 
 
 Senible, that, where the piracy alleged has taken place abroad, it 
 becomes the duty of the defendant to give evidence of a negative 
 character to prove (in answer to the prima facie case made by the 
 patentee) that the process used was of a different character from 
 that which had been patented. 
 
 Where that negative evidence was not given by the defendant, 
 but positive evidence on the part of the patentee was given by one 
 workman that he had been employed at the foreign manufactory, 
 and there saw the capsules manufactured by a process not dis- 
 tinguishable from that of the pateijtee : — Held, that these circum- 
 stances ju^tified the conclusion of identity of material and process. 
 (L. B., 6 H. L. 1.) 
 
 (6 *) Batley v. Kynock. [1875] 
 
 Bacon, V.-C. : " What is the office of a scientific witness in 
 giving evidence in this Court? His office is to point out and 
 explain the mechanism by which power is applied, and the means 
 whereby mechanical effects are produced. To that task he brings 
 special knowledge." (L. B. 20 Eq. 637.) 
 
 (c) Badische Anilin und Soda Fabeik v. Levinstein. [1883] 
 
 On the question of infringement, the defendant alleged that he 
 used a secret process entirely different from that of the plaintiff's, 
 and was allowed to refuse to answer any question which would 
 disclose it. Subsequently the Court being of opinion that the 
 patent was valid, gave the defendant leave to state his process in 
 camera, and the shorthand writers' notes, which would have 
 disclosed the process, were impounded. (24 Ch. D. 156.) 
 
 (c*) Automatic Weighing Machine Company «. Knight. [1888] 
 
 In an action for infringement, it was held that there had been no 
 infringement. The Court expressed its approval of the conduct of 
 the plaintiffs, who had called only one scientific witness. (TF. N., 
 1888, 250.) 
 
Account. 367 
 
 (■^) Caetsbuen Company v. Shaepe. [1884] 
 
 "Where it appeared that the articles sold by the respondents 
 might have been produced by machinery, which involved no 
 infringement of the complainers' patent : — Held, that it did not 
 lie on the respondents to prove that the articles were not manu- 
 factured according to the specified process, and that the complainers 
 had failed to prove their case. (1 0. B. 181.) 
 
 Practice — Account. 
 
 Patents Act, 1883, sect. 30. In an action for infringement of a patent, the 
 Court or a judjie may on the applicafciim of either party make such order for 
 Hn injunction inspection or account, and impose such terms and give sucli 
 directions respecting the same and the proceedings thereon as the Court or a 
 judge may see fit. 
 
 («) Jones v. Peaecb. [1831] 
 
 Shadwell, V.-O. : " Where an undertaking by the defendant to 
 keep an account will afford to the Court ample means of doing 
 justice to the plaintiff, should his legal right be established, the 
 Court rarely grants the interim injunction." (2 Coop. ,68.) 
 
 (/) Ceossley v. The Deeby Gas Light Company. [1834] 
 
 Where the words of the decree ordering an account to be taken 
 are clear, it is not the practice of the Court to express an opinion 
 for the guidance of the master as to particular difficulties which 
 may arise, even although these difficulties may be foreseen. Such 
 difficulties must be dealt with when they actually occiir in pur- 
 suing the investigation. (3 M. & Or. 428.) 
 
 (gr) Bacon v. Spottiswoode. [1839] 
 
 A plaintiff is not entitled to any account, even though he may 
 have a right to an injunction, when the bill alleges that the 
 defendant has sold and used, it being the fact that ho has sold for 
 no profit, and it not appearing that he has used otherwise than by 
 furnishing the patent article to his customers, although the 
 defendant may have derived a collateral profit from the use of 
 such articles by his customers, where that case is neither alleged 
 in the bill nor proved.- (1 Beav. 587.) 
 
 Qi) Hadden v. Smith. [1847] 
 
 The plaintiff granted a licence to the defendant to use two 
 patents, upon payment of certain royalties. The plaintiff after- 
 wards put in a disclaimer as to part of his patent ; the defendant 
 refused to continue paying the royalties, on the ground that the 
 licence was void. The bill prayed an account of royalties under 
 the licence ; and in case the defendant should dispute the plaintiff 's 
 right to payment by reason of the invalidity of the patent or 
 otherwise, then that the defendant might be restrained from 
 continuing to manufacture articles the subject of the patent : — 
 Seld, upon demurrer, that if the licence were void, and the de- 
 fendant was not bound to account, he ought to be restrained from 
 
368 PEACTICE : 
 
 acting without the authority of the plaintiff. Demurrer overruled. 
 (17 L. J., Gh. 43.) 
 
 (i) Mitchell v. Barker. [1851]' 
 
 Where, upon the face of the aflSdavits, the evidence as to the 
 validity of the patent and its infringement was distinctly contra- 
 dictory, an injunction was refused, but the plaintiff was directed 
 to bring his action at law, the defendant undertaking to keep an 
 account in the meantime. (39 Lond. Jour. 531.) 
 
 (j) Smith v. The LoNDOii and South Western Eailway Company. 
 [1864] 
 
 The right to a decree in equity for an account of the profits 
 made by the manufacture and use of articles in infringement of 
 a "patent was incident to the right to an injunction to restrain 
 future infringements ; and where no case was made for the injunc- 
 tion, the accoTint was not decreed. {Kay, 408.) 
 
 Wood, V.-C, in delivering judgment, said : " The true ground 
 of the relief in these cases is laid down in Bailey v. Taylor 
 (1 B. & M. 75), where Sir J. Leach, M.E., says, ' The Court has no 
 jurisdiction to give to a plaintiff a remedy for an alleged piracy, 
 unless he can make out that he is entitled to the equitable inter- 
 position of this Court by injunction ; and in such case the Court 
 will also give him an account, that his remedy here may be 
 complete.' " 
 
 (Ic) Holland v. Fok. [1854J 
 
 In an action for the infringement of a patent, plaintiff obtained a 
 verdict for 40«. damages. Afterwards he obtained a rule, absolute 
 in the first instance, ordering defendant to render an account of all 
 the articles which he had before and since the commencement of 
 the action made or sold in breach of plaintiiFs patent and pay to 
 plaintiff the moneys received for such articles. A rule nisi was 
 obtained, on the part of the defendant, to discharge this rule. It 
 appeared that defendant had made profits by the sale of the 
 pirated articles since the commencement of the action ; but that 
 he had discontinued the manufacture since the verdict and before 
 the plaintiff's rule was obtained. And it appeared that, shortly 
 after the action commenced, plaintiff's attorney had told the other 
 side that plaintiff would take only nominal damages, and would, 
 if necessary, file a bill in equity to obtain an account of the profits : 
 — Held, that the action was still pending, so as to give this Court 
 jurisdiction under the Patent Law Amendment Act, 1852, sect 42 : 
 — Held, also, that there having been a verdict with damages, and 
 there being no continuing piracy such as would give ground for 
 an injunction, no account of profits before action could be ordered ; 
 but, held, that the defendant might be considered as trustee for 
 the plaintiff of those profits which he had made, pending the action, 
 after notice that plaintiff would require them ; and that an account 
 of those profits might be ordered. The practice of the equity 
 
Account. 369 
 
 courts followed. (3 Ell. & B. 977 ; 2 0. L. B. 1576 ; 1 Jur., N. S. 
 13; 23 L. J., Q.B.3b7.) 
 
 (I) ViDi W.Smith. [1854] 
 
 Pending an action for infringement of a patent for an invention, 
 plaintiff obtained, under the Patent Law Amendment Act, 1852, a 
 rule nisi that defendant should render on oath an account of the 
 sale of the articles (alleged to be pirated) sold before the action, 
 and of the profit made therefrom ; and keep an account of the 
 articles to be sold and of the profit therefrom. The rule was 
 drawn up on an affidavit that plaintiff had the patent, and that 
 defendant had infringed it after notice. Cause being shown : — 
 Held, that no retrospective account of profits made by sales before 
 the action ought to be ordered before final judgment, and so much 
 of the rule was discharged : — Held, also, that the Court had juris- 
 diction to order an account to be kept in future, though no injunc- 
 tion was asked for, it appearing that there was a prima facie case 
 of infringement : and the Court ordered that the rule should be 
 absolute for such an account, on condition that the plaintiff elected 
 not to claim damages at the trial, and undertook, if he failed in 
 the action, to pay defendant the expense of keeping the account so 
 ordered. (3 Ell. & B. 969 ; 2 C. L. B. 1673 1 Jur., N. S. 14 ; 
 23 L. J., Q. B. 842.) 
 
 (i») Price's Patent Candle Company v. BiuwEu's Patent Candle 
 Company. [1858] 
 
 The rule in patent cases, that this Court could not decree an 
 account unless it could grant an injunction, applied, notwithstand- 
 ing it might appear at the hearing that, since an interim injunc- 
 tion was moved for, the defendants had sold articles which, had 
 the facts and law been then sufficiently ascertained, the Court 
 would have restrained them from selling. (4 K. & J. 727.) 
 
 (m*) Kernot v. Potter. [1862] 
 
 K. and P. entered into an agreement that K. should take out a 
 patent and assign it to P., and that P. should work it as long as it 
 could be worked at a profit, and pay royalties. P. ceased working 
 the patent, alleging that it could not be worked at a profit, and 
 refused to pay royalties. K. obtained judgment in an action at law 
 for royalties, and then applied for an injunction and an account 
 of subsequent royalties, or if the agreement were determined 
 for relief against the defendant as an infringer : — Held, that -in a 
 case of this nature it was in the discretion of the Court whether 
 it would direct an account or leave the parties td their remedy at 
 law, and that the account being only a part of an agreement 
 which the Court could not wholly enforce, the plaintiff ought to 
 be left to his remedy at law. (3 Be G., F. & J. 44:7.) 
 
 («) Hills v. Evans. [1862J 
 
 Where an injunction was granted to restrain an infringement, 
 
 2 E 
 
370 , PEACTICE : 
 
 liberty was given to the plaintiff, instead of an account, to bring 
 an action at law for damages, in lieu of an account. (8 Jur., N. S. 
 531.) 
 
 (o) Edwards v. Normandy. [1864] 
 
 E. being owner of one-third of an American patent, assigned his 
 interest therein to N., the legal owner of the other two-thirds, in 
 consideration of receiving one-fifth of the profits to arise from sales 
 of the invention in America, for which N. agreed to account to him, 
 and he deprived himself of all right to interfere in arrangements 
 made for licensing such sales. N. was, in this transaction, the 
 agent of a company who were beneficial owners of the two-thirds 
 of the American patent, and of an English patent for the same in- 
 vention, and was the exclusive manufacturer of the invention in 
 England, but bound to supply his manufacture to the company 
 only. The company granted to G. an exclusive licence for the 
 sale of the invention in America, supplying him with machines at 
 certain prices, higher than those at which they bought from N., 
 and receiving from G. one- third of the net profits arising from the 
 American sales : — Held, Ist, that G. was not liable to account to 
 B. for his profits ; 2nd, that the company were bound to account to 
 E. for profits arising from the sale to G. at higher prices than were 
 paid to N. ; 3rd, that N. was not bound to account to E. for the 
 profits arising from the manufacture of the invention. (3 N. B. 
 662 ; 12 W. B. 548.) 
 
 (p) Trotman v. Wood. [1864] 
 
 The jury, in an action against the defendants for non-payment 
 of royalties and for an account, found that the defendants had used 
 a part of the plaintiffs invention : — Held, that the plaintiff was 
 entitled to an account. (16 C. B., N. S. 479.) 
 
 (g) Mathers v. Green. [1865] 
 
 Where a patent for an invention is granted to two or more 
 persons in the usual form, each one may use the invention without 
 the consent of the others, and without accounting for the profits s6 
 made. (L. B., 1 Ch. 29.) 
 
 (r) Ellwood v. Christy. [1865] 
 
 The Court will only direct an account to be taken, under the 
 42nd section of 15 & 16 Vict. c. 83, of the profits which have been 
 actually made by the defendant, and not of the loss ivhich the plain- 
 tiff has sustained hy the infringement ; and, in the case of an assignee 
 of the patent, the account will only be taken from the dute of the 
 registration of the assignment under sect. 35. (18 G. B., N. S. 
 494 ; 34 L. J., 0. P. 130 ; 13 W. B. 498.) 
 
 (s) NuNN V. D 'Albuquerque. [1865] 
 
 The defendant having in ignorance infringed the plaintifl's 
 patent, submitted, and he offered before suit to pay the amount of 
 profits made, which were very trifling. At the hearing, although 
 
Account. 371 
 
 a perpetual injunction was granted, no costs were given, and an 
 account was granted only upon the plaintiff's request and at liis 
 peril. (34 Beav. 595.) 
 
 (i) Eenaed v. Levinstein. [1865] 
 
 It is no sufficient answer to a motion for an interlocutory in 
 junction that the defendant has volunteered to keep an account. 
 (2 Hem. & M. 628.) 
 
 (m) Fox v. Dellestable. [1866] 
 
 F. obtained a patent for umbrella ribs, and enjoyed it uninter- 
 ruptedly to its conclusion, with the exception of an action for 
 damages by H., nnother patentee, who recovered £300, and a 
 manufactuie and sale of the ribs by D. & D. six months before it 
 expired. P. filed a bill and restrained D. & D., and the cause 
 came to a hearing nine months after the expiration of the patent. 
 Malins, V.-C. : " Although the p itent has expiied, if tl)e bill was 
 previously filed, the plaintiff is entitled to an account, if the Court 
 sees a proper case for it. . . .But regard must be had to the par- 
 ticular circumstances of the case, and the question is whether, 
 under the circumstances of the case, I ought to give relief. To 
 justify me in doing so, I must be satisfied of the validity of the 
 patent." (15 W. B. 194.) 
 
 (w) MoxoN V. Bright. [1869] 
 
 A patentee agreed with a machine maker that the machine 
 maker should make machines according to the patent and sell 
 them, taking a certain sum upon ewch machine for himself, and 
 paying to the patentee as a royalty the amount charged for the 
 machines above that sum : — Held, that the patentee could not 
 maintain a suit in equity for an account against the machine 
 maker as agent, although in one case he received a sum of money 
 for the patentee. {L. B., 4 Ch. 292.) 
 
 (w) Saxby v. Easterbeook. [1872] 
 
 An account will be granted, as soon as the verdict is given, and 
 the defendant cannot refuse to allow his bocks to be inspected, fur 
 the purpose of taking an account, on the ground that he is about 
 to appeal. (L. B., 7 Exch. 207 ; 41 L. J., Exeh. 113.) 
 
 (x) De Titre v. Betts. [1 873] 
 
 The rule that, upon a decree against a party for the infringe 
 ment of a patent, the patentee is not entitled under 21 & 22 Vict, 
 c. 27, ss. 2, 5, to have both an account of profits and an inquiry 
 into damages, is now established, and applies to every case of in- 
 fringement. The patentee must therefore elect which of th" two 
 forms of relief he will adopt. (L. B., 6 H. L. 319 ; 21 W. B 
 705.) 
 
 (y) Adair v. Young. C. A. [1879] 
 
 In an action by a patentee to restrain alleged infringements of 
 
 2 B 2 
 
372 PEACTICE : 
 
 letters patent for the manufacture of pumps, a judgment was made 
 giving a perpetual injunction against tke defendants, wlio were 
 pump manufacturers, and directing an account of the profits made 
 by them by the sale of pumps made in infringement of the letters 
 patent. The defendants forthwith gave notice of appeal, and set 
 the appeal down for hearing, and then applied to stay proceedings 
 under the account till the appeal was heard. This application was 
 refused by Bacon, V.-C. : — Held, on appeal, that as the discovery 
 given by the account would enable the plaintiff to take proceed- 
 ings against the customers of the defendants, and the defendants, 
 supposing them to be ultimately successful, would thus sustain 
 irreparable injury in their business, the appeal ought to be ad- 
 vanced, and proceedings under the account stayed till the hearing. 
 Costs of the application made costs of the appeal. (H Ch. D. 136.) 
 
 («) Beegmakn v. MacMillan. [1881] 
 
 An account of profits will not be directed if it is clear that no 
 profits have been made. 
 
 An assignee of a share of profits is entitled to an account from 
 the licensee, but the account must be taken once for all in the 
 presence of all the parties interested. (17 Ch. D. 423.) 
 
 (a) Weederman v. Socifoi Gen^rale D'iELECTEiciTi;. C. A. [1881] 
 
 By an assignment of a patent it was agreed that the patentee 
 was to have £1000 and 5 per cent, on the profits, or on a sale out 
 and out was to have in lieu of the ariangement as to profits 5 per 
 cent, of the net purchase-money. The assignees covenanted for 
 themselves and their assigns to work the invention to the best 
 advantage, and that an account of profits should be rendered yearly 
 by them or their assigns. The assignees formed a company to 
 work the patent, and the patent was made over to them with 
 notice of the arrangement. Held, that the assignment amounted 
 to a contract that the owners for the time being of the patent 
 should account for and pay to the patentee a share of the profits, 
 unless a sale within the meaning of the deed was effected, and that 
 no one taking with notice of this contract could refuse to give effect 
 to it. (19 Ch. D. 246.) 
 
 (6) Watson d. Holliday. [1882] 
 
 The amount of profits- made by infringing a patent is recover- 
 able by the patentee, not as damages, but as money had and 
 received to his use ; and the patentee is therefore not prevented 
 by the 31st section of the Bankruptcy Act of 1869, from proving 
 in the bankruptcy of the infringer for these profits. (20 Gh. 
 B. 780.) . 
 
 (c) SiDDELL V. ViCKERS SONS AND COMPANY. [1889] 
 
 In an action for infringement of a patent for an improved 
 appliance for use in large forgings, the Court of Appeal had 
 ordered " an account of all iron or steel forgings, manufactured by 
 the defendants by the use of the plaintiff's said invention, as de- 
 
Damages. 373 
 
 scribed in figure 2 of the specification, and also of the profits made 
 by the defendants by reason of such use." The defendants refused 
 to disclose any accounts of the profits made by them prior to their 
 commencing to use the plaintiff's invention, on the ground that the 
 alterations in their profits were not due to using the plaintiff's 
 invention, but to other causes. Kekewich, J., being of opinion 
 that for the purpose of ascertaining the profits made by reason of 
 the use of the plaintiff's invention, it was necessary to inquire 
 what was the cost of forging iron and steel forgings manufactured 
 by the defendants, both pri(jr to the use of such invention and 
 during its use, ordered the defendants to give such information 
 within a fortnight. (6 0. B. 464.) 
 
 Practice — Damaged. 
 
 Patents Act, 1883, sect. 17, sub-s. 4 (b.) If any proceeding shall be taken 
 in respect of an infringement of the patent committed after a failure to make 
 any payment within the prescribed time, and before the enlargement thereof, 
 the Court before which the proceeding is proposed to be taken may, if it 
 shall think fit, refuse to award or give any damages in respect of such 
 infringement. 
 
 [Sect. 17 is set out in full at p. 599.] 
 
 Sect. 20. Where an amendment by way of disclaimer, correction, or 
 explanation, has been allowed under this Act, no damages shall be given in 
 any action in respect of the use of the invention before the disclaimer, 
 correction, or explanation, unless the patentee establishes to the satisfaction of 
 the Court that his original claim was framed in good faith and with 
 reasonable skill and knowledge. 
 
 {d) Arkwright v. Nightingale. [1785] 
 
 Where a patentee, who has failed to establish his right under the 
 patent upon a former occasion, sues for damages for an alleged 
 infringement, the defendant is allowed to give evidence to show 
 to what extent persons have acted upon the faith of the former 
 verdict. {Bav. P. G. 55, 1 Webs. P. (7. 61.) 
 
 (e) Newall v. Wilson. [1852] 
 
 An allegation as to the defendant's inability to be answerable in 
 damages, held not irrelevant upon a motion for an injunction 
 against the infringement of a patent. (2 Be G., M. & G. 282.) 
 
 (/) Smith v. London and North Western Eailway Company. 
 [1853] 
 Where the defendants have gone on using the infringing articles 
 without any concealment, believing that they had a right to do so, 
 and the owner of the patent has stood by, damages ought not to be 
 assessed as if the defendants had purchased every article at the 
 patentee's price. {Mac. P. C. 188.) ' 
 
 (g) Needham v. Oxlet. [1863] 
 
 Where a bill prays in the alternative an inquiry as to damages, 
 or an account of the defendant's profits, but no issue as to damages 
 was submitted to the jury, the Court will not refer an inquiry to 
 
374 PEACTICE : 
 
 assess damages to chambers, but will grant the alternative. 
 (8 L. T. Bep., N. S. 604 ; 2 N. B. 388.) 
 
 (K) Betts v. De Vitee. [1864] 
 
 The jurisdiction given by the Chancery Amendment Act, 
 1858, to award damages when relief is sought by injunction 
 against wrongful acts, extended to the case where the Court had 
 previously the power of giving some other form of remedy, as, for 
 example, an account of profits. 
 
 Since the Chancery Acts, 1858 and 1862, the question of 
 damages will still be left to be decided by a jury where there is 
 extrume difficulty in their assessment by the Couit itself. 
 
 Therefore, in a suit for an injunction by a patentee who had 
 granted no licences, the Court put him to his election whether he 
 would have an account of prudts or an action for damages against 
 the defendants ; following the form in Hills v. Evans. (11 Jur., 
 N. S.9;ll L. T. Bep., N. S. 533.) 
 
 (i) Davenport v. Eylands. [1865] 
 
 The plaintiff's bill prayed for an injunction against the 
 infringement of his patent by the defendant, for an account of 
 profits and for damages. After the filing of the bill, but before 
 the healing of the caui-e, the patent expired. The infringement 
 being proved, the Court held that, for the purpose of awarding 
 damages under the Act 21 & 22 Vict. c. 27, its jurisdiction related 
 back to the time of the filing of the bill. For, otherwise, the 
 object of the statute, which was to enable a Court of Equity to 
 give full and complete relief to a suitor without recourse to a court 
 of law, would be defeated, (i. B., 1 Eq. 302; 36 L. J., Ch. 204; 
 U L.T. Bep., N. S. bS.) 
 
 Wood, V.-C, said: "The inquiry will be in the form, 'what 
 damage the plaintiff has sustained,' and not 'what damage, if any,' 
 he has sustained, as it would be in the case of a trade-mark. There 
 is this difference between the case of a trade-mark and that of a 
 patent : in the former case the article sold is open to the whole 
 world to manufacture, and the only right the plaintiff seeks is 
 that of being able to say, ' Don't sell any goods under my mark.' 
 He may find his customers fall off in consequence of the defen- 
 dant's manufacture ; but it does not necessarily follow that the 
 plaintiff can claim damages for every article manufactured by the 
 defendant, even though it be under that mark. On the other hand, 
 every sale without licence of a patented article must be a damage 
 to the patentee." (i. B., 1 Eq. 308.) 
 
 (j) Pe>(n v. Bibby. [1866] 
 
 Where bills to restrain the infringement of a patent have been 
 filed against both the person who manufactures and the person 
 who uses the article, and issues of fact have been found for the 
 plaintiff, it is the right of the plaintiff to have not only an account 
 against the manufacturer, but also damages against the person 
 
Damages. 375 
 
 using the article, wherever it he found. (L. B. 3 Eq, 308 ; 36 
 L. J., Oh. 277.) 
 
 (k) Penn v. Jack. [1867] 
 
 A suit was instituted to restrain the defendants from infringing 
 the plaintiff 's patent for an invention applicable to steam vessels. 
 By the decree the defendants were ordered to pay to the plaintiif 
 the damages which he had sustained by reason of the defendants' 
 user or vending of the invention. The plaintiff had been in the 
 habit of granting licences to use the invention at the rate of 2s. 6d. 
 per horse-power per ship : — Seld, that the compensation to which 
 the plaintiff was entitled was a sum calculated on this basis upon 
 the ships to which the defendants had applied the invention, and 
 that he was not entitled to any additional sum in respect of 
 contracts which he had missed by reason of the defendants' 
 piracy. 
 
 The plaintiff having, in another suit, obtained a decree against 
 certain wrongful users (not being manufacturers) of unlicensed 
 machines fitted by the defendants with the plaintiff 's invention, 
 had, in some instances, been paid his ordinary royalty by such 
 users : — Held, that, in every such instance, no further royalty 
 was payable by the manufacturer. (L. B., 5 Eq. 81 ; 37 L. J. 
 Ch. 136.) 
 
 (I) Betts v. Neilson. [1868] 
 
 Damages may be awarded, although not specifically prayed by 
 the bill. (18 L. T. Bep., N. S., 159.) 
 
 (to) Betts v. Gallais. [1870] 
 
 The Court would not entertain a bill for the mere purpose of giving 
 relief in damages for the infringement of a patent, when the bill 
 had been filed so immediately before the expiration of the patent 
 as to render it impossible to have obtained an interlocutory in- 
 junction. (L. B., 10 Eq. 392 ; 22 L. T. Bep., N. S., 841.) 
 
 (n) Neilson v. Betts. H. L. [1871] 
 
 A patent having been sustained, the decree granted an injunction 
 against further infringement, directed an inquiry as to damages 
 and an account as to profits. The decree was varied by striking 
 out, in accordance with the respondent's election, the order for the 
 account of profits. Per Lord V\ estbury : " The two things are hardly 
 reconcilable, for if you take an account of profits you condone the 
 infringement." (i. B., 5 H. L. 1.) 
 
 (o) De Vitrb v. Betts. H. L. [1873] 
 
 The validity of the patent and the fact of infringement by the 
 defendants having been decided in the plaintiff's favour, the Court 
 below directed an account of profits made by the defendants by the 
 use and exercise of the plaintiff's invention, and an inquiry what 
 sum ought to be paid by the defendants in respect of damage sus- 
 
376 PEACTICE : 
 
 tained by the plaintiff by the defendants' use and exercise of the 
 plaintiff's invention. 
 
 The Lord Chancellor, on appeal to the House of Lords, said : 
 " The case of Neilson v. Betts most undoubtedly decided the general 
 principle that, upon a decree against a party for the infringement 
 of a patent, the patentee is not entitled both to an account of 
 profits and an inquiry into damages. That principle applies 
 geneially and without any distinction at all. It ajiplies to every 
 case of infiingement; and, therefore, it must be taken to have 
 settled conclusively that point, that the patentee must, in all these 
 cases where he has a decree, elect whether he will have an account 
 of profits or an inquiry into damages. He cannot have both." 
 (L. B. 6 M. L. 321.) 
 
 (p) United Telephone Company 8). Walker. [1886] 
 
 The plaintiffs, whose usual practice was not to sell but to let out 
 their patented article at a royalty, obtained judgment for infringe- 
 ment, and an inquiry as to damages : — Held, that the measure of 
 damages was the profit rental during the entire period, from the 
 time when the article came into the possession of the infringer until 
 the assessment of damages or delivery up of the article ; that it 
 -was immaterial whether the article had been in actual use or not; 
 and that the defendants coTild not set off the value of any infringing 
 article delivered up under the judgment of the Court, nor any 
 portion of an agreed sum for damages already recovered by the 
 plaintiffs against the manufacturer, from whom the defendants 
 bought the articles ; although, at the time of such action being 
 commenced, the goods were already in the possession of the 
 defendants ; but, that if the damages recovered from the manu- 
 facturer had been a sum representing the full rental or royalty, 
 the defendants would have been entitled to set it off. (66 L. T. 
 508 ; 4 O. B. 63.) 
 
 (5) American Braided Wire Company v. Thomson. [1888] 
 
 The Court of Appeal having granted an injunction and an 
 inquiry as to damages, the plaintifl" applied to the judge of first 
 instance, that the inquiry might be referred to a judge and special 
 jury for trial. Kekewioh, J., was of opinion that he had no 
 jnrisdicfiori to make such an order : on appeal from this decision, 
 the parties consented to a reference to an official referee, and the 
 Court of -Appeal reserved its opinion on the point, but decided 
 that such an order should be asked lor when the inquiry is granted. 
 (5 0. B. 696.) 
 
 (r) United Horseshoe and Nail Company v. Stewart and Co. 
 H. L. [1888] 
 
 Action by assignees of a patent, who did not grant licences, but 
 themselves manufactured and sold the nails produced by their 
 patented machinery. It was admitted that the defenders had sold 
 a number of boxes of nails manufactured so as to infringe the 
 
Damages. 377 
 
 patent : — Seld, that to the extent by which their trade was injured 
 by the sales, the pursuers were entitled to substantial damages ; 
 that the measure of damage was not the profit made by the 
 defenders, but the prcjfit which the pursuers would have made out 
 of such sales, deducting a fair percentage in respect of sales due to 
 the particular exertions of the defenders; and that the possibility 
 that the defenders mijrht have manufactured similar nails, without 
 infringing the patent, was no ground for reducing the damages to 
 a nominal sum : — Held, further, that the fact that the pursuers 
 had, in consequence of the unlawful competition of the defenders, 
 reduced the price of nails sold by themselves, did not entitle them 
 to recover additional damages in respect of the reduction in the 
 profits on such sales. 
 
 The inherent illegality of a sale of goods manufactured without 
 licence by patent machinery is not affected by the circumstance 
 that the infringement consisted in using a small, and it may be 
 the least useful, part of the invention. (13 App. C. 401.) 
 
 (s) Proctor v. Bailey. [1889] 
 
 In an action for infringement, the Palatine Court has only power 
 to grant damages, under Lord Cairns' Act, where it is proper to 
 grant an injunction ; and, therefore, if the infringement is of old 
 date, and there is no evidence of intention to continue it, the Pala- 
 tine Court has no jurisdiction. (6 0. iJ. 538.) But see p. 346 (^). 
 
 (J) American Braided Wire Company v. Thomson. [1890] 
 
 In an action for infringement, an inquiry as to damages was 
 ordered, and the official referee found substantially (1) that the 
 reductions in prices made by the patentees were so made in conse- 
 quence of the sales of the defendants ; and that, subject to the 
 following allowances, the plaintiffs would have made the t-ales 
 made by the plaintiffs, and also those made by the defendants at 
 the plaintiffs' original prices ; (2) the additional profit which the 
 plaintiffs would have made on their own sales, at the original 
 price, would have been £7257, from which 20 per cent, was 
 deducted as an allowance for the increase of sales due to the 
 reduction in price ; (3) the profit which the plaintiffs would have 
 made on the articles made and sold by the defendants, if the plain- 
 tiffs had made and sold them at the original prices, would have 
 been £4028, from which deductions were made (a) of 10 per cent, 
 on account of sales due to the connection and exertions of the 
 defendants, and (b) of 20 per cent, as an allowance for the increase 
 of sales due to the reduction in price ; or in the alternative, (4) the 
 profits which the plaintiffs would have made on the articles made 
 and sold by the defendants, if the plaintiffs had made and sold 
 them at the prices which they were getting was £1838, from 
 which a deduction of 10 per cent, was made on account of the 
 connection and exertions of the defendants : — Meld, by Kekewich, J., 
 following the United Horseshoe and Nail Company v. Stewart, that if 
 the patentee thinks fit to reduce the price, he is not entitled to 
 recover the difference in price because it is not the natural and 
 
378 PEACTICE : 
 
 direct consequence of the infringer's acts ; and that, therefore, the 
 alternative measure (4) must be adopted instead of (3), and that 
 the amount found in paragraph (2) must be omitted altogether. 
 (7 O. B. 47.) But Tield, by the Court of Appeal, that the referee 
 was justified in finding as a fact that but for the wrongful act of 
 the defendants the plaintiffs would have sold, at the original 
 prices, those bustles which in fact they sold at the lower price, 
 and those which the defendants themselves sold at a lower price : 
 that all the damages found were the direct and natural consequence 
 of the wrongful acts done by the defendants, and that the plaintiU's 
 were entitled to the full amount. (44 Ch. D. 274 ; 1 0. B. 152.) 
 
 Practice. — New Trial, 
 (u) "Walton v. Potter. [1841] 
 
 Where the judge has left to the jury the specific issues raised on 
 the record, and refused to put to them certain questions of fact, 
 suggested by the defendant's counsel : — Held, no mis-direction, or 
 ground for a new trial. 
 
 Semble, such questions can only be asked with the consent of 
 all parties, and the jury are not bound to answer them. (11 
 L. J., a p. 138.) 
 
 (y) Patteson v. Holland. [1845] 
 
 Where one action for infringement had been tried, and a rule 
 nisi for a new trial had been obtained and argued, and another 
 action was pending for another infringement of the same patent, 
 and a scire facias had been sued out to repeal the patent, the Court 
 suspended their judgment upon the rule for a new trial, and 
 ordered the trial of the other action to be postponed until after the 
 trial of the scire facias. {Hind, on Pat. 293.) 
 
 (w) Feenie v. Young. H. L. [1866] 
 
 Where a Court of Chancery has directed an issue to try a 
 question of fact, before a jury, or before a judge without a jury, 
 and a verdict has been found by the jury or the judge, it will not 
 enter into the question of fact and set aside the verdict without a 
 motion for a new trial or for judgment non obstante veredicto. 
 {L. B., 1 E. L. 80.) 
 
 (x) Penn v. Bibby ; Penn v. Jack. [1866] 
 
 In dealing with the finding of the Court below, upon questions 
 of fact, under the jurisdiction given by the Chancery Amendment 
 Act, 1858, the Court of Appeal is placed precisely in the situation 
 of the judges of the courts of common law when a rule is obtained 
 to set aside the verdict of a jury ; consequently, the Court will not 
 consider whether the finding was proper, but merely whether 
 there was sufficient evidence to warrant the verdict. Where the 
 motion for a new trial is grounded on the improper rejection of 
 evidence, the evidence ought to have been formally tendered to the 
 judge of the court below, and rejected by him. (L. B., 2 Gh. 127; 
 36 L. J., Ch. 455.) 
 
Appeals. 379 
 
 (j)) Daw v. Elet. [1867] 
 
 A. obtained, in a suit against B. for infringement, a decree by 
 •whicli the validity of the patent was declared, and an injunction 
 ■was granted to restrain infringement. If, upon motion to commit 
 B. for breach of the injunction, it is shown that the patent had 
 ceased to be of any validity at the date of decree : — Held, that 
 the only mode of getting rid of the decree is by bill of review, 
 showing that it was erroneous in delaring the patent to be valid 
 and subsisting. (L. B., 3 Eq. 509 ; 36 L. J., Ch. 485.) 
 
 (2) HiNDE V. Osborne. C. A. [1885] 
 
 In an action for infringement the defendants pleaded want of 
 novelty, but withdrew the plea being unable to give particulars. 
 On appeal they alleged that since the trial they had searched the 
 records in the British Museum ami were prepared to show that the 
 invention was not novel. Brett, M. E. : " What is the principle of 
 law applicable to such cases ? It is that you cannot have a new trial 
 under such circumstances unless you show that you have discovered 
 fresh evidence, which by due diligence and care you could not 
 have discovered before the trial. Here this is not made out ; because 
 one of the ordinary modes of objecting to the novelty of a patent, 
 that is, of seeking for evidence to show that it is novel, is to go to 
 those verj' places which the defendants' advisers now say they 
 have been to." {Griff. 125 ; 2 0. B. 64, at p. 67.) 
 
 (a) Germ Milling Company v. Eobinson. C. A. [1886] 
 
 The patentee being called by the plaintiffs, stated that he had 
 publicly sold flour made according to his process before the date 
 of the patent. The plaintiffs applied for a new trial on the 
 ground that this was a slip, but their application was refused. 
 (3 O. B. 399). 
 
 Practice — Appeals. 
 Appeals to the Law Officers. 
 
 (By the Patents Act, 1883, sects. 7, 9 and 18, amended by 48 & 49 
 Vict. c. 63, and 51 and 52 Vict. c. 50, where the comptroller requires an 
 amendment under sect. 7 or 9 of the Patents Act of 1883, or refuses leave to 
 amend under sect. 18, and the applicant appeals, the law officer shall, if 
 required, hear the applicant and the comptroller, and by sect. 11, amended 
 by 51 and 52 Vict. c. 50, where notice of opposition is given under sect. 11, 
 and the comptroller decides on the case and there is an appeal, the law officer 
 shall, if required, hear the applicant and any person so giving notice and 
 being in the opinion of the law officer entitled to he heard in opposition to 
 the grant, and shall determine whether the grant ought or ought not to he 
 made, and by sub-s. (4) the law officer may, if he thinks fit, obtain the 
 assistance of an expert who shall be paid such remuneration as the law 
 officer, with the consent of the Treasury, shall appoint.) 
 
 [These sections 7, 9, 11 and 18, will he found set out in full on pp. 34, 35, 
 38, and 10, respectively.] 
 
 Patents Act, 1883, sect. 38. The law officers may examine witnesses on 
 oath and administer oaths for that purpose under this part of this Act, and 
 may from time to time make, alter, and rescind rnles regulating references 
 and appeals to the law officers and the practice and procedure before them 
 
380 PEACTICE: 
 
 under this part of this Act ; and in any proceeding before either of the law 
 officers under this part of this Act, the law officer may order costs to be 
 paid by either party, and any such order may be made a rule of the Court. 
 
 Rules Eegulating the Practice and Procedure on Appeals to the 
 Law Officers, 1883. 
 
 1. When any person intends to appeal to the law officer from a decision of 
 the comptroller in any case in which such appeal is given by the Act, he 
 shall within 14 days from the date of the decision appealed against file in the 
 Patent Office a notice of such his intention. 
 
 2. Such notice shall state the nature of the decision appealed against, and 
 whether the appeal is from the whole, or parfonly, and if so, what part of 
 such decision. 
 
 3. A copy of such notice of intention to appeal shall be sent by the party 
 so intending to appeal to the law officers' clerk, at room 549, Royal Courts of 
 Justice, London ; and when there has been an opposition before the 
 comptroller, to the opponent or opponents ; and when the comptroller 
 has refused to seal a patent on the ground that a previous application for a 
 patent for the same invention is pending, to the prior apphcant. 
 
 4. Upon notice of appeal being filed, the comptroller shall forthwith 
 transmit to the law officers' clerk all the papers relating to the matter of the 
 application in respect of which such appeal is made. 
 
 5. No appeal shall be entertained of which notice is not given within 
 14 days from the date of the decision appealed against, or such further time 
 as the Comptroller may allow, except by special leave upon application to the 
 law officer. 
 
 6. Seven days' notice, at least, of the time and place appointed for the 
 hearing of any appeal, shall be given by the law officers' clerk, unless 
 special leave be given by the law officer that any shorter notice be given. 
 
 7. Such notice shall in all cases be given to the comptroller and the 
 appellant ; and, when there has been an opposition before the comptroller, to 
 the opponent or opponents ; and, when the comptroller has refused to seal a 
 patent on the ground that an application for a patent for the same inveation 
 is pending, to the prior applicant. 
 
 8. The evidence used on appeal to the law officer shall be the same as 
 that used at the hearing before the comptroller; and no further evidence 
 shall be given, save as to matters which have occurred or come to the 
 knowledge of either party, after the date of the decision appealed against, 
 except with the leave of the law officer upon application for that purpose. 
 
 9. The law officer shall, at the request of either party, order the attendance 
 at the hearing on appeal, for the purpose of being cross-examined, of any 
 person, who has made a declaration, ia the matter to which the appeal relates, 
 unless in the opinion of the law officer, there is good ground for not making 
 such order. 
 
 10. Any person requiring the attendance of a witness for cross-examination 
 shall tender to the witness whose attendance is required a reasonable sum for 
 conduct money. 
 
 11. Where the law officer orders that costs shall be paid by any party to 
 another, he may fix the amount of such costs, and if he shall not think fit to 
 fix the amount thereof, he shall direct by whom and in what manner the 
 amount of such costs shall be ascertained. 
 
 , 12. If any costs so ordered to be paid be not paid within 14 days after 
 the amount thereof has been so fixed or ascertained, or such shorter period as 
 shall be directed by the law officer, the party to whom such costs are to be 
 paid may apply to the law officer for an order for payment under the 
 provisions of section 38 of the Act. 
 
 13. All documentary evidence required, or allowed by the law officer to be 
 
Appeals. 381 
 
 filed, shall be subject to the same regulations, in all respects, as apply to the 
 procedure before the comptroller, and shall be filed in the Patent Office, unless 
 the law officer shall order to the contrary. 
 
 14. Any notice or other document required to be given to the law 
 ofScers' clerk, under these rules, may be sent by a prepaid letter through 
 the post. 
 
 Appeals to the Court of Appeal. 
 
 (a) Washburn Company v. Patteeson. [1884-5] 
 
 "Where the defendant had been ordered to deliver up to the 
 plaintiff the infringing machines, the Court refused to suspend the 
 order pending an appeal unless the defendants undertook not to 
 remove the machines out of the country or to use them meanwhile. 
 
 "Where security for the costs of an appeal is ordered, and three 
 months, or what the Court considers a. reasonable time, has elapsed 
 without such security being given, the appeal will be dismissed 
 unless extenuating circumstances are shown. {Griff. 239 ; 1 0. iJ. 
 191 ; 2 O.B. 27.) 
 
 (6) Hinde v. Osboene. 0. A. [1885] 
 
 On an application to the Court to hear fresh evidence on appeal, 
 there must be some ground shown to satisfy the Court that there is 
 some evidence now forthcoming which could not with due dili- 
 gence have been got before, and such ground must be not merely 
 swearing by affidavits or anything of that kind, but something in. 
 the nature of the production of a lost document which will not 
 expose the parties to a mere flood of affidavits, made up to meet 
 the defects disclosed at the trial. (Grif. 125 ; 2 0. B. 45'.) 
 
 (c) Otto v. Steel. C. A. [1886] 
 
 Pearson, J., having refused a stay pending an appeal, the 
 defendant appealed from suflh refusal. The defendant admitted 
 infringement, but disputed the validity of the patent. Held, that 
 as the patent had been established in this and in previous actions, 
 it would not be right to stay the account or the operation of the 
 injunction, (3 0. B. 121.) 
 
 (d) Walker v. Hydeo-Caebon Syndicate. C. A. [1886] 
 Applications for leave to adduce further evidence on appeal, 
 
 and to postpone the appeal from a decision dismissing a petition 
 for revocation on the ground that the petitioner who desired to be 
 present was abroad were both refused. (Afterwards the appeal 
 was withdrawn by arrangement.) (8 O. B. 253.) 
 
 (e) Watling v. Stevens. C. A. [1886] 
 
 An appellant applied for leave to produce further evidence, but 
 was refused as his affidavit did not show that the further evidence 
 first came to his knowledge after the trial. On the second day he 
 produced such an affidavit, but was told it was too late. (Griff, 
 242; 3 O.B. 150.) 
 (/) Britain v. Hirsch. C. A. [1888] 
 
 The Court of Appeal not being satisfied that the plaintiffs had 
 not been deterred Irom asking one of their witnesses certain 
 
382 PEACTICE : 
 
 questions by the expressed opinion of the judge, gave the appel- 
 lants an opportunity of calling such witness and heard witnesses 
 on behalf of the respondents upon the point. (5 0. B. 226.) 
 
 (g) Ellington v. Clakk. 0. A. [1888] 
 
 A copy of the judge's notes should be procured in all cases 
 depending on the evidence of the appellant, or the case will be 
 ordered to stand over at his expense. (5 0. B. 322.) 
 
 (g*) Spencee v. Ancoats Vale Eubber Company. C. A. [1888] 
 
 The defendant company having agreed to an order restiaining 
 them from infringement, the plaintiffs subsequently moved to 
 sequestrate the company's property, and to commit certain of the 
 directors for breach of the injuiiction contained in the order, aid 
 on an appeal applied to introduce further evidence : — Held, that 
 the application was an interlocutory one, and that the further 
 evidence should be admitted. (6 0. B. 46.) 
 
 Judgment on the Pleadings. 
 
 (h) The Geovee and Baker Sewing Machine Company v. Millaed. 
 [1862] 
 
 In a case where the defendant, who was out of the jurisdiction 
 of the Court, had not put in an answer, although the time for 
 answering had long expired, and had never appeared to the hill, 
 the Court, on the plaintiff applying for leave to enter an appear 
 ance in order to take thu bill pro confesso, ordered that notice 
 should be given to the defendant, that unless he put in an answer 
 within fourteen days from the service of such notice, an appearance 
 would be entered for him, and proceedings taken to take the bill 
 pro confesso. (8 Jur., N. S. 713.) 
 
 (i) United Telephone Company v. Donohob. C. A. [1886] 
 
 In an action for infringement of a patent the defendant in his 
 defence admitted ten instances of infringement, but denied that 
 he had committed any others. Eeld, that the plaintiff was 
 entitled to a perpetual injunction, and an inquiry as to damages 
 on the basis that there were ten instances of infringement and no 
 more. (31 Ch. B. 399.) 
 
 (j) United Telephone Company ». Smith. [1889] 
 
 United Telephone Company v. Mitchell. 
 
 The plaintiffs in each action delivered particulars of breaches, 
 and in their statements of claim stated " particulars of breaches are 
 delivered herewith." Ko statement of defence was delivered in 
 either action. On motion for judgment Held, thiit for the purpose 
 of the judgment the particulars of breaches might be regarded 
 as forming part of the statements of claim. (38 W. B. 70.) 
 
 Practice — Costs. 
 
 Patents Act, 1883, sect. 31. In an action for infringement of a patent, the 
 Court or a judge may certify that the validity of the patent came in 
 
Costs. 383 
 
 question ; and if the Court or a jud^e so certifies, then in any subsequent 
 action /or infringement, the plaintiff in that action on obtaining a final 
 order or judgment in his favour shall have his full costs charges and 
 expenses as between solicitor and client, unless the Court or judge trying the 
 action certifies that he ought not to have the same. 
 
 (Zc) GlLLETT V. WiLBY. N. P. [1839] 
 
 In an action for the infringement of a patent three pleas were 
 pleaded : 1st, the general issue ; 2nd, that the alleged improve- 
 ments were not new ; and 3rd, that the plaintiffs were not the 
 true and first inventors of the improvements : — Held, that the 
 validity of the patent might be considered as having come in 
 question under the second plea, so as to entitle the plaintiff to a 
 certificate to that effect, under the 3rd section of the statute 5 & 6 
 WiU. 4, c. 83. (1 Web. P. G. 270 ; 9 G. & P. 334.) 
 
 (/) LosH V. Hagite. [1839] 
 
 Where a defendant, in an action for the infringement of a 
 patent, succeeds on a plea which goes to the whole action, he will 
 be entitled to the general costs of the cause, deducting the costs 
 of the objections on which the plaintiff has succeeded, and of the 
 issues found for him. The certificate given by the judge under 
 the 5 & 6 Will. 4, c. 83, s. 5, should be as to the determination of 
 each objection of which notice has been given, and not as to the 
 issues. (6 M. & W. 387 ; 7 D. P. G. 495 ; 3 Jur. 409.) 
 
 (to) Gillett v. Gkeen.- [1841] 
 
 An action on the case for the infringement of a patent is within 
 the operation of the 3 & 4 Vict. o. 24, s. 2 ; and notwithstanding 
 the provisions of the stat. 5 & 6 Will. 4, c. 83, s. 3, the plaintiff, 
 recovering only nominal damages, cannot have his full costs, or 
 triple costs, without a ceiiificate under the former Act. After the 
 taxation the judge has no power to grant a certificate. (7. M. & W. 
 347 ; 9 X>. P. G. 219 ; 1 Web. P. G. 271.) 
 
 (n) Stocker v. Eodgees. N. P. [1843] 
 
 If, in an action for the infringement of a patent, the defendant 
 plead not guilty, that the invention is not new, and that the speci- 
 fication is not sufficient ; and the defendant at the trial consent to 
 a verdict for the plaintiff, without any evidence being given, the 
 judge will not certify under the stat. 6 & 6 WiU. 4, c. 83, s. 3, 
 " that the validity of the patent came in question before him." 
 (1 G. & K. 99.) 
 
 Erskine, J., said : " My certificate would affect third parties ; 
 and it would be possible, in a case like the present, for two parties, 
 by collusion, to consent to a verdict in favour of a patent, and, if 
 they could obtain a certificate under the 3rd section of the statute, 
 to use it afterwards to the injury of another party who was really 
 contesting the validity of the patent." (16. 100.) 
 
384 PKACTICE : 
 
 (n) Geary 13. Norton. [1846] 
 
 The plaintiff is entitled to the coets of an injunction, althougli 
 the defendant promises to commit no further act of infringement. 
 (1 De G. & S. 9.) 
 
 (0) Stevens v. Keating. [1850] 
 
 On a bill filed for an injunction, the plaintiff obtained the 
 injunction ou motion, the defendant appearing and opposing the 
 motion ; the bill was subsequently dismissed with costs : — Held, 
 that the defendant was entitled to the costs of the motion which 
 he had unsuccessfully opposed. (1 Mac. & O. 659.) 
 
 (p) Newall v. Wilkins. N. P. [1851] 
 
 After the plaintiff in an action for infringement has obtained 
 a verdict, the record of a former trial, in which the patent was 
 affirmed, is admissible to show that the plaintiff is entitled to 
 treble costs. The defendant's case ought not to be prejudiced by 
 the admission of the evidence upon the trial ; but it ought to be 
 proved subsequently. (17 L. T. Bep. 20.) 
 
 (q) Lister v. Leather. [1858] 
 
 Where the Court considers the plaintiff entitled to full costs as 
 between solicitor and client, the decree or order should contain 
 an express direction that the costs be so taxed, notwithstanding 
 the 43rd section of the Patent Law Amendment Act, 1852, pro- 
 vides that he shall have such full costs, unless the judge shall 
 certify that he ought not to have them. (4 E. & J. 425.) 
 
 (r) Clark v. Feesusson. [1859] 
 
 Where the bill, praying for an injunction to restrain the 
 infringement of a patent, described the plaintiff as a lieutenant 
 in Her Majesty's ship Gladiator, now on service, the Court refused 
 to compel him to give security for costs. (1 Giff. 184.) 
 
 (s) Greaves v. The Eastern Counties Eailwat Company. [1859] 
 
 In an action for the infringement of a patent, defendants de- 
 livered, with their pleas, particulars of objections, pursuant to 
 stat. 15 & 16 Vict. c. 83, s. 41. The plaintiff having abandoned 
 his action before trial : — Held, that the defendants were entitled to 
 the costs of the particulars and of the evidence in support of them, 
 for sect. 43 does not apply, so as to limit the ordinary right to 
 costs, except when the cause comes on for trial. (1 Ell. & Ell. 
 961 ; 28 L. J., Q. B. 290 ; 5 Jur., N. S. 733.) Held, also, that the 
 cause not having been tried, the defendant, under 6 Geo. 4, c. 50, 
 s. 34, was not entitled to the costs of a special jury applied for by 
 him. (lb.) 
 
 (t) Betts v. Clifford. [1860] 
 
 On a bill to restrain the infringement of a patent, a motion for 
 injunction was ordered to stand over until after the trial of an 
 action, nothing being said about costs. In the action, the plaintiff 
 
Costs/ 385 
 
 succeeded on the issue as to the infringement, but failed in 
 establishing the validity of his patent. The bill was afterwards 
 dismissed with costs : — Held, that the defendant's costs of the 
 motion were costs in the cause. 
 
 There must be some special circumstances, beyond the mere 
 •weight of the cause, to justify the allowance of the costs of a third 
 counsel. Examples of such special circumstances are cases of 
 illness, and cases where a junior counsel is called within the 
 bar, and it becomes necessary, according to the rules of the bar, to 
 retain another junior: and cases where the third counsel (of the 
 common law bar) has been engaged in a case, the evidence and 
 judge's notes in which form a substantive part of the plaintiff 's 
 case, (1 J. & R. 14:.) 
 
 (li) Eenaed v. Levinstein. [1864] 
 
 Where the defendant was ordered to pay costs incurred by him 
 through amending his particulars of objections, the Court refused, 
 on the application of the plaintiff, to put him upon the terms of 
 giving security for their payment on proof that he had a place of 
 business in England. (11 L. T. Sep., N. S. 505 ; 13 W. B. 229.) 
 
 (v) BoviLL V. Hadley. [1864] 
 
 The 43rd sect, of the 15 & 16 Vict. c. 83, enacts, that it shall be 
 lawful for the judge before whom an action for infringing letters 
 patent shall be tried, to certify on the record that the validity of 
 the patent came in question ; and that " the record, with such 
 certificate, being given in evidence in any suit or action for 
 infringing the said letters patent," shall entitle the plaintiff, on 
 obtaining final judgment, to " his full costs, charges and expenses, 
 taxed as between attorney and client," unless the judge shall 
 certify that he ought not to have such full costs. 
 
 An action having been brought by a patentee (substantially) 
 for the recovery of royalties under a due licence, a compromise 
 was entered into before the plaintiff's case was closed, and an order 
 of nisi prius was drawn up, under which the defendant was to pay 
 an agreed sum, and a verdict was to be entered for the plaintiff in 
 the action, for 40s. damages, and costs, with all "^ usual certifi- 
 cates." After the cause was thus disposed of, the presiding judge, 
 upon an ex parte application, indorsed on the record a certificate 
 that the record in a certain action wherein Bovill was plaintiff and 
 Keyworth was defendant, and the certificate thereon indorsed, was 
 given in evidence at the trial of this action : — Seld, that this 
 certificate was improperly granted, the record and certificate in the 
 former action not having been given in evidence, and it not being 
 under the circumstances a " usual certificate " within the t3ontem- 
 plation of the parties. (17 0. B., N. S. 435 ; 10 L. T. Bep., N. S. 
 650.) 
 
 (w) Curtis v. Platt. [1864] 
 
 The defendant obtained further time to plead, on the terms that 
 the cause should be put down for trial before issue joined, and that 
 
 2 c 
 
386 PEAOTICE : 
 
 short notice of trial should he taken. The pleas were delivered, 
 and the plaintiff had a special jury nominated, but not sti-uck. 
 The action was then discontinued before issue joined or notice of 
 trial given : — Seld, that the circumstances of the case did not 
 authorize a departure from the general rule, that costs incurred 
 before notice of trial shall not be allowed. (33 L. J., G. P. 265 ; 
 10 Jur., N. S. 823; 10 L. T. Bep., N. S. 383.) Willes, J., said: 
 " With respect to tlie second ground, it is contended, that as 
 notice of objection is delivered with the pleas, the expenses incurred 
 in preparing these objections ought to be allowed as accessory to 
 these objections. But I am not satisfied that these expenses were 
 connected with the objections; one instance given has been the 
 looking into specifications of patents of a similar character ; but 
 the validity of such a claim would depend on whether the de- 
 fendant knew, when he delivered the objections, the particulars of 
 the invention, or whether he was merely making speculative 
 inquiries. I have strong doubts whether such expenses should be 
 allowed at all." (10 Jur., N. S. 823.) 
 
 (x) Betts v. Db Vitee. [1864] 
 
 The directors of a limited company, and acting as its agents, 
 infringed a patent, and were made defendants, together with the 
 company, to a suit, the bill in which prayed for an injunction and 
 costs : — Held, that the decree must be made against the directors 
 as well as the company, and that the directors were personally 
 liable to pay the costs. (11 Jur., N. S. 9 ; 11 L. T. Bep., N. S. 533.) 
 Sir W. Page Wood, V.-C. : " Where there is a wilful act against 
 the rights of a patentee after he has obtained a verdict, and the 
 certificate of a judge that his title came in question, all the world 
 must be taken to know that that was fairly and completely tried and 
 disposed of, and, if they infringe the patent, they infringe it, with 
 a liability for costs, in consequence of the full right being dis- 
 posed, of." (11 Jur., N. S. 11.) 
 
 (?/) Ellwood v. Cheisty. [1865] 
 
 In an action for the infringement of a patent, the plaintiffs 
 claimed in their declaration a writ of injunction, and an account 
 to be taken of all profits. The plaintiffs having obtained a verdict 
 on all the issues, a rule nisi was obtained for the master to take an 
 account of all profits made by the defendants. The defendants, on 
 showing cause, made an affidavit stating what profits they had 
 made. The Court made the rule absolute on the terms that, if the 
 plaintiff's should not succeed in surcharging the account stated in 
 the affidavit by one-sixth, they were to pay costs of the rule and 
 inquiry. (13 W. B. 498.) 
 
 (z) Davenport v. Eylands. [1865] 
 
 A patentee is entitled to costs as between solicitor and client 
 at the discretion of the judge, under the 15 & 16 Vict. c. 83, 
 s. 43, in any suit to protect his rights under a patent, the 
 validity of which has been previously established, notwith- 
 
Costs. 387 
 
 standing the fact tliat the validity of the patent is not ques- 
 tioned in the subsequent suit. (L. B., 1 Eq. 302 ; 35 L. J., Ch. 
 204.) 
 
 (a) NuNN V. D' Albuquerque. [1865] 
 
 The defendant, having in ignorance infringed the plaintiff's 
 patent, submitted, and he offered before suit to pay the amount of 
 profits made, but did not offer to pay the plaintiff's costs. At the 
 hearing, the Court refused to give the plaintiff his costs, although 
 a perpetual injunction was granted. (34 Beav. 695.) 
 
 (&) Penn v. Bibby. [1866] 
 
 Where, in a suit to restrain the infringement of a patent, issues 
 are directed, and the judge certifies that the validity of the letters 
 patent came in question, the plaintiff cannot, at the hearing of that 
 suit, have more' than party and party costs, the provisions of the 
 43rd section of the Patent Law Amendment Act, 1852, applying 
 only to subsequent actions and suits. (L. B. 3 Eq. 308 ; 36 L. J., 
 Ch. 277.) 
 
 (c) Penn v. Bibby. [1866] 
 
 Upon leave being granted to a defendant to re-amend objections 
 by inserting certain further specified instances which had come to 
 his knowledge, he was ordered to pay the costs of the application, 
 and the costs arising out of and consequent upon the re-amend- 
 ment were reserved. (L. B., 1 Eq. 648.) 
 
 {d) Betts v. Cleaver. [1872] 
 
 Where a leader has been employed in a suit but not retained, 
 
 the co.sts of employing him as third counsel at the hearing will not 
 
 be allowed as between party and party, although the junior counsel 
 
 - who drew the pleadings has, before the hearing, been called within 
 
 the bar. 
 
 A similar affidavit was filed by the plaintiff in each of several 
 suits. The solicitor for the defendants took an office copy of the 
 affidavit in one suit only, and examined at the Eecord Oifioe the 
 affidavits in the other suits : — Held, that he was not entitled to 
 charge for perusing the affidavits in the other suits, (i. B., 7 Ch. 
 613.) 
 
 (e) Db Vitre v. Betts. H. L. [1873] 
 
 The appellants gave notice to the respondent that a decision 
 favourable to their contention on one point of the pending appeal 
 having been given in another case by a court of final appeal, they 
 were prepared to withdraw from the remaining points of their 
 appeal and pay the respondent's costs up to the date of their doing 
 so, on condition that the respondent would consent to a variation in 
 the order appealed from, in conformity with the decision favour- 
 able to the appellants' one contention which had been so given 
 during the pendency of the appeal. The appellants added, that 
 in the event of the respondent rendering it necessary to proceed 
 
 2 c 2 
 
388 PEACTICE: 
 
 with the appeal in spite of such decision they should, if successful, 
 , ask for the costs of the iappeal. The respondent declined to consent 
 to such variation : — Seld, that he must pay the costs of the appeal 
 from the date of his refusal to accede to the appellants' proposaj. 
 (21 W. B. 705.) 
 
 (/) Smith v. Buller. V.-C. M. [1875] 
 
 On taxation of costs as between party and party, the only costs 
 chargeable against the unsuccessful party are such as are necessary 
 for the conduct of the litigation. Any charges merely for con- 
 ducting litigation more conveniently may be called luxuries, and 
 must be paid by the partj' incurring them. E.g., the costs of 
 drawings of exhibits affixed to the margin of counsel's briefs were 
 disallowed. 
 
 Charges for the attendance of a solicitor's clerk in addition 
 to the solicitor on cross-examination will not in any case be 
 allowed. 
 
 The charge to be allowed for counsel's fees for cross-examination 
 will not ordinarily exceed £5 5s. a day after the first, for which a 
 larger fee may be allowed in heavy cases ; and where the case is 
 long and complicated, as much as £7 7s. a day may be allowed for 
 the subsequent days. 
 
 A moderate fee, such as £7 7s. a day, may be allowed for a 
 scientific witness to read up a case for the purpose of giving 
 evidence. 
 
 The burden of proving the necessity for employing three counsel 
 rests with the person who employs them, regard being had to the 
 nature of the case, the length of the evidence, the subject-matter 
 of the suit, and the amount of property involved. 
 
 The rule of the Common Law Courts as to refreshers applies to 
 the hearing of heavy suits in Chancery, whether on written or 
 viva, voce evidence, the brief fee being taken to cover two days. 
 (L. B., 19 Eq. 473.) 
 
 (g) Batley v. Kynock. V.-C. B. [1876] 
 
 In a suit to restrain infringement, the plaintiff,- before the hear- 
 ing, obtained the common order to dismiss the bill with costs. On 
 taxation, objection was taken to the allowance of drawing particu- 
 lars of breaches and settling same by counsel, on the ground that, 
 by 15 & 16 Vict. c. 83, s. 43, costs "shall not be allowed in respect 
 of any particular, unless certified by the judge before whom the 
 trial was heard to have been proved by such plaintiff or defendant 
 respectively." (L. B. 20 Eq. 632.) 
 
 Bacon, V.-C. : " I cannot say that the Master, in refusing to 
 disallow the defendants' costs of preparing their defence, was 
 wrong. . . . The state of circum&tances contemplated by the 
 statute never did, and never conld, arise. The case referred to 
 at common law, Honiball v. Bloomer (10 Exch. 538), has no appli- 
 cation to the present case." ; 
 
 A second objection referred to the payments made to scientific wit- 
 nesses. Bacon, V.-C, adopted the rule of the Court as stated by 
 
Costs, 389 
 
 the officer of tlie Court, who reported that " It is the practice in 
 equity to allow a proper remuneration to scientific witnesses." 
 But added, "But great care is necessary in dealing with such 
 charges in party and party costs." (I&. 637.) 
 
 A third objection was as to a model prepared for tbe hearing. 
 Bacon, V.-C. : " In cases of patents where scientific evidence is 
 brought in, the use of a model is, in many instances, indis- 
 pensable. Very often neither the plaintiff's nor the defendants 
 can put their case before the Court at all without the assistance of 
 a model. Even when not indispensable, it is often eminently 
 useful, without laying either party open to the charge of indulging 
 in the luxuries of which V.-C. Malins (Smith v. Buller) spoke." 
 (i6. 638.) 
 
 (g*) Ball v. Lelm. [1881] 
 
 The defendant strenuously resisted the plaintiff's action for 
 infringement until he came into Court, when he submitted to 
 judgment. Kay, J., refused to give a certificate that the validity 
 came in question. (Times, 14th April, 1881.) 
 
 (A) Edison Telephone Company v. India Eubbee Company. [1881] 
 
 Where after issue joined, and a day has been fixed for the 
 hearing, the defendant obtains leave to amend his particulars of 
 objection, all costs incurred by the plaintiff subsequently to the 
 delivery of the original particulars of objection must be paid by the 
 defendant, in case the plaintiff elects within a time fixed by the 
 order to discontinue the action. (17 Oh. I). 137.) 
 
 (i) United Telephone Company v. Haerison, Cox, Walker and 
 Company. [1882] 
 
 Where at the trial of an action for infringement the Court is of 
 opinion that there has been infringement, but holds on a legal 
 ground that the patent is void, it would not give the plaintiff a 
 certificate under sect. 43 of the Patents Act, 1852, that breaches by 
 the defendant had been proved. (21 Gh. B. 720.) 
 
 (J) Watson v. Holliday. [1882] 
 
 When a bankrupt, sued for infringement of a patent, does not 
 appear at the hearing, and his trustees appear and defend, they 
 are liable to the costs of the action. (20 Gh. D. 780.) ' 
 
 (h) Lister v. Norton. [1884] 
 
 Motions for interlocutory injunctions stand on a different footing 
 in patent cases. Where there is an independent case against a 
 motion, so that the defendant may say, "If you succeed at the 
 trial yet you must have failed on the motion by reason of the 
 delay, and therefore you have exposed me in. any view to unneces- 
 sary expense," it is better then to order the motion to stand to the 
 trial, if the defendant asks for it, instead of merely making the 
 costs in the motion costs in the action {Griff. 149 ; 1 0. B. 114.) 
 
890 PKAOTICE : 
 
 (?) MooEE «. Bennett. H. L. [1884] 
 
 On appeal the general rule is that where there is a successful 
 paity, i.e. a party who has brought an appeal and succeeded, ^rmd 
 facie, he gets the costs of the appeal. Where there is an appeal 
 upon two grounds, and the appellant succeeds upon one and the 
 respondent upon the other, the party who has succeeded upon one 
 was justified in bringing the appeal, but he has not succeeded 
 altogether, and he does not get the costs. {Griff. 158 ; I 0. B. 
 129.) 
 
 (m) Peroni v. Hudson. [1884] 
 
 In an action for infringement the defendant delivered a defence 
 and particulars of objections, but did not appear at the trial. 
 Kay, J., refused an application that costs might be on the higher 
 scale. He gave a certificate that the plaintiff had proved his 
 particulars, but refused to certify that the patent had come in 
 question, holding that sect. 31 only applied where the patent was 
 established in a case contested in court. {Griff. 184 ; 1 0. B. 261.) 
 But see Haydoch v. Bradbury, p. 391 (m). 
 
 (n) United Telephone Company v. Townshend. [1885] 
 
 When the defendant was willing to agree to submit to a per- 
 petual injunction, and to pay party and party costs, but the plain- 
 tiffs having a certificate that the validity of the patent had already 
 come in question, claimed solicitor and client costs : — Held, that if 
 the defendants consented to treat the hearing of the motion as the 
 trial of the action the order must be for solicitor and client's costs. 
 (3 0. B. 10.) 
 
 (o) Cropper v. Smith and Hancock. [1885] 
 
 The defendant Smith delivered three objections, the first 
 only of which was relied on by Hancock in his particulars. 
 The House of Lords held that the first two objections failed, but 
 that the third objection was sufficient to invalidate the patent, and 
 that Hancock was not shut out from the benefit of that decision. 
 Pearson, J., being applied to by both defendants as judge of first 
 instance for a certificate, certified that the defendant Smith had 
 established his third objection. (W. N. 1885, p. 111.) 
 
 (p) Badische Anilin und Soda Fabeik v. Levinstein. [1885] 
 
 Where it was held that a patentee had failed in establishing the 
 validity of his patent, but succeeded on the issue of infringement : 
 ordered that the plaintiff should pay the general costs of the 
 action, but that the defendant should pay the costs occasioned by 
 the issue of infringement, the one set of costs to be set off against 
 the other. (29 Oh. D. 366.) There was a cross appeal to the 
 House of Lords on this order, but as the main appeal was success- 
 ful, it became unnecessary for the cross appeal to be considered. 
 (10 App. a. 710.) 
 
Costs. 391 
 
 (g) POOLET V. PoiNTON. [1885] 
 
 Pearson J. : " The Court of Appeal have lately decided (and I 
 am glad they have been able to come to that decision), that al- 
 though the patent of the plaintiff may be absolutely bad and 
 may be no patent at all, nevertheless if the defendant chooses to 
 deny the infringement of the patent, assuming the patent to be 
 good, and puts the plaintiff to the expense of meeting that issue, 
 infringement or no infringement, even if the plaintiff fails in the 
 main subject of the suit, by reason of his patent not being a good 
 patent, he is nevertheless entitled, as against the defendant, to the 
 costs of the issue in respect of the infringement." {Griff. 199 ; 
 
 2 0. B. 167, at p. 169.) 
 
 (r) Paekell v. Moet Liddell & Co. 0. A. [1885] 
 
 The Court of the County Palatine is not affected by the Patent 
 Law Amendment Act, 1852. At the trial of an action for in- 
 fringement the judge held that the patent was bad on its face 
 and dismissed the action with costs, saying that the defendants 
 ought to have the costs of the witnesses brought to support their 
 particulars of objections, although not called. Held, that there 
 was no obligation on a Court of Equity not bound by the Act to 
 follow the rule as to costs of particulars of objections in the 
 Patents Act of 1852, and that therefore the judge had power to 
 give these costs. (29 Ch. B. 325.) 
 
 (s) Hocking v. Feaser.- [1885] 
 
 Where the plaintiffs claimed for infringement of two patents 
 and succeeded on the first, but offered no evidence as to the second : 
 — Held, that the defendants were entitled to be paid the costs so 
 far as they were increased by the second claim. {Griff. 129 ; 
 
 3 0. B. 3.) 
 
 {t) United Telephone Company v. TLEMiNa. (No. 2.) [1886] 
 
 A statement of claim and particulars of breaches having been 
 delivered and no defence having been put in, Chitty, J., ordered 
 an injunction and delivery up of instruments and costs as between 
 solicitor and client up to and including judgment, but not the 
 costs of the inquiry until after it had been held. The learned 
 judge said : " I never part with the control of the costs ; it is my 
 fixed rule." (3 0. B. 282.) 
 
 (u) Hatdock v. Bradbury. [1886] 
 
 In an action for infringement the defendant denied infringe- 
 ment and put in issue the validity of the patent, but did not 
 appear at the trial. Held, that the plaintiff on proving his case 
 was entitled to a certificate that the validity of the patent came in 
 question. (4 0. B. 74.) 
 
 (v) GrtJiLBERT Martin V. Keer. [1886] 
 
 Costs of the issue of infringement were refused to the unsuccessful 
 
392 PEACTICE : 
 
 ful plaintiffs on the ground that the isBue was not sufficiently" 
 distinct from the rest of the case. (4 0. B. 23.) 
 
 (w) Easteebeook v. Great Westeen Eailway Company. [1886] 
 
 A patentee who cannot do what he professes to do, ought not 
 to block the way for other inventors and harass them with actions 
 when they have succeeded where he has failed. In such an action 
 when the questions of utility and infringement could not be 
 separated, the Court would not take away from the defendants the 
 costs of the issue of infringement when they had succeeded as to 
 utility. (2 0. B. 210 ; Griff. 85.) 
 
 (a;) EowcLiFFE v. Moeeis. [1886] 
 
 In an action for infringement Bristow, V.-C, held the patent 
 invalid and dismissed the action with costs. The defendant did 
 not apply at the trial for a certificate that he had proved his 
 particulars of objections, but moved for one six months afterwards. 
 The plaintiff opposed the motion. The Vice-Chancellor granted 
 the certificate but gave no costs of the motion. (3 0. B. 145.) 
 But see next case. 
 
 (y) Peoctob v. Sutton Lodge Chemical Co. [1887] 
 
 The Vice-Chancellor of the County Palatine is not a " Court " 
 or a "Judge" within sect. 31, and consequently a certificate 
 granted by him that the validity of a patent came in question 
 is useless, and will not entitle the plaintiff in a subsequent action 
 to solicitor and client's costs. (5 0. B. 184.) [But now see 53 & 54 
 Yict. 0. 23, s. 3.] This action being vexatious, the judge ex ahundante 
 cautela gave a certificate depriving the plaintiff of such costs. 
 
 (z) Kaye v. Chubb. C. A. [1887] 
 
 The costs of the issue of infringement on which the plaintiff 
 succeeded being trifling, and the patent being held to have been 
 anticipated, the Court of Appeal, exercising the same discretion as 
 the judge at the trial would have done, gave the defendants the 
 whole costs of the action. (4 0. B. 289.) 
 
 (o) American Braided Wire Company v. Thomson. [1887] 
 
 Costs of issues raised by some of the defendants' particulars of 
 objection as to which no evidence had been offered, ordered to be 
 paid by the defendants although on the whole successful, 
 (4 0. B. 322.) (The decision in the defendants' favour was after- 
 wards reversed, see p. 261 (?>).) 
 
 (6) EoTHWELL V. King. [1887] 
 
 The plaintiff had obtained an interim injunction on giving the 
 usual undertaking as to damages. The injunction was subse- 
 quently dissolved by consent without prejudice to the under^ 
 taking. Held, in the Palatine Court, that the defendant was 
 entitled to an inquiry as to damages and an order for the payment 
 thereof and for payment of the costs of the motion, and of the 
 
Costs. 393 
 
 inquiry, and tliat tbe costs of the inquiry oiight not to be reserved. 
 (4 0. It. 76.) : — Held, subsequently, that the Court could not give 
 the defendants a certificate as to their particulars of objection. 
 (4 0. B. 397.) 
 
 (c) Fletcher v. Akden. 
 
 A certificate of particulars of objection -was given with a 
 direction that it should not operate to duplicate costs. (5 0. B. 
 69.) 
 
 (d) Badham v. Bird. [1888] 
 
 The certificate as to particulars of objections was limited to 
 those which were put to the plaintiff in cross-examination. 
 (5 0. B. 238.) 
 
 (e) LONGBOXTOM V. Shaw.1 riQgal 
 
 and Oddy v. Smith. ) i- -I 
 Certificates of particulars of objections, which the successful 
 defendants had had no opportunity of proving, were refused. 
 (5 0. JR. 502, 509.) 
 
 (/) Crampton V, The Patents Investment Company. [1888] 
 
 A certificate of validity was granted in an action to restrain 
 threats without prejudice to the effect of such certificate. 
 (5 0. B. 404.) 
 
 (g) Haslam Foundry and Engineering Company v. Halt,. C. A. 
 
 [1888] 
 
 A certificate made under sect. 31 of the Patents Act of 1888, 
 that the validity of the patent came in question, is not a judgment 
 or order against which an appeal lies under sect. 19 of the 
 Judicature Acts, 1873. (20 Q. B. B. 491.) 
 
 A certificate had been granted that the validity of the patent 
 came in question, although the patent was held invalid. (5 0. B. 
 144.) 
 
 QC) Ellington v. Clark Burnett and Co. C. A. [1888] 
 
 When the plaintiffs brought scientific witnesses and thereby 
 rendered it necessary for the defendants also to bring scientific 
 witnesses, and it was held that there was no infringement : — Held, 
 that costs ought to be allowed on the higher scale. (5 0. B. 319.) 
 
 (J) Cole v. Saqui and Lawrence. C. A. [1888] 
 
 The Court of Appeal, in reversing a decision in favour of a 
 patent, has jurisdiction to grant a certificate that the particulars of 
 objection were reasonable and proper so as to entitle the defendant 
 to costs in respect thereof. (40 Gh, D. 132.) 
 
 (j) Blakey v. Latham. [1888] 
 
 "Where a patent was held to be invalid, but the Court said that 
 ;" If the patent was valid there had been an infringement," the 
 Court re&aed to insert a declaration in the judgment that there 
 
394 PEACTICE. 
 
 bad been an infringement, or to allow the plaintiffs any cost in 
 respect of such issue. {W. N. 1888, p. 126.) 
 
 (h) Blank v. Footman. [1888] 
 
 Wbere there is a distinct issue upon which the generally 
 successful party fails, and that issue can be separated from the 
 others so that you may show that it has really no immediate 
 connection . with those upon which the party has succeeded, he 
 ought not to have the costs of that issue on which he has failed, 
 and which presumably ought never to have been raised. (5 0. B. 
 661.) The costs of such a separate issue were in this case given 
 to the unsuccessful plaintiff. 
 
 (T) Goulard and Gibbs' Patent. [1888] 
 
 On a petition for revocation the judge was of opinion that there 
 was no power to give a certificate as to particulars of objections.' 
 (5 0. B. 537.) 
 
 (m) TicKELPENNY V. Armt AND Navy Co-operative Societt. [1888] 
 
 Costs of particulars not proved by plaintiffs not given to 
 defendants. (6 0. B. 411.) 
 
 (m) Kaye v. Chubb. H. L. [1888] 
 
 Costs paid without an undertaking to refund can be ordered to 
 be repaid on appeal. (5 0. B. 653.) 
 
 (o) Ward v. Livesey. [1888] 
 
 The plaintiff charged his licensee with fraud in relation to the 
 accounts rendered, but failed to support such charge. Held, that 
 although entitled on the whole to the relief asked for, the 
 plaintiff wa^ not entitled to get his costs up to and including the 
 trial, but that each party must pay their own. (5 0. B. 110.) 
 
 (jj) Edison and Swan Electric Light Company v. Holland, 
 ■ [1889] 
 
 Where a certificate of validity has been granted in a former 
 action, another one will not be granted, lest doubt should be 
 thrown on the sufficiency of the first. (6 0. B. 243.) The third 
 parties being the real defendants were made liable for the costs. 
 (41 Ch. B. 28.) 
 
 (r) Automatic Weighing Machine Company v. International 
 Hygienic Society. [1889] 
 
 Held, by Charles, J., that where a certificate had been granted 
 that the validity of the patent came in question, but this action 
 had been commenced before such certificate was granted, sect. 81 
 had no application, and that was not altered by the defendants 
 having amended their defence after the certificate was granted : — 
 Held, further, that even if sect. 31 did apply, as the only question 
 was infringement of an admittedly valid patent, a certificate ought 
 to be granted that the plaintiff ought not to have his costs as 
 between aolicitor and client. (6 O. B. 475.) 
 
PEINCIPLE. 895 
 
 (s) United Telephone Company v. Patterson. [1889] 
 
 In an action for infringement, the defendant did not dispute the 
 ■validity of the patents, but denied infringement, and in the alter- 
 native paid £75 into court. The plain tiifs proved certificates of 
 the validity of the patents having been previously tried, and the 
 defendant, at the hearing, submitted to an injunction and an 
 inquiry, but objected to paying solicitor and client costs, as the 
 validity had not been disputed : — Held, by Chitty, J., that the 
 mere fact that the validity of the patent was not called in question, 
 was no ground by itself for the judge exercising his discretion, and 
 .certifying that the plaintiff ought not to have solicitor and client 
 costs : — Seld, further, that the costs of the inquiry, and as to the 
 issue concerning damages must be reserved until after the inquiry, 
 but with that exception, the plaintiff must have solicitor and client 
 costs up to judgment. (6 0. B. 140 ; 60 L. T. 315.) 
 
 (t) Shaw v. Jones. [1889] 
 
 In an action for infringement, Smith, J., gave judgment for the 
 plaintiffs, with an injunction and costs, and referred it to the 
 referee to take an account, and gave him jurisdiction over the costs 
 of the reference, in order that if the plaintiffs insisted on taking 
 an account, which turned out to be a trumpery thing, they might 
 not have the costs of doing it. (6 0. B. 328.) 
 
 (u) Edmunds' Patent. [1889] 
 
 Where in a petition for revocation, the question of fact had been 
 sent to be tried by a judge at assizes, and the judge found that the 
 patent should be revoked, but declined to deal with anything 
 beyond the facts : — Held, that the Chancery Division had power to 
 deal with the costs, and that the petitioner ought to have them. 
 (6 0. B. 355.) 
 
 (v) Gaeeaed v. Edge. C. A. [1890] 
 
 The defendants having succeeded on the ground of non-infringe- 
 ment, the taxing-master disallowed the costs of their particulars 
 of objections, as no certificate had been obtained. The plaintiff 
 then carried in for taxation a bill of costs occasioned by his having 
 had to meet the defendants' objections : — Held, that as the costs of 
 defendants' particulars were only disallowed in consequence of the 
 absence of a certificate, and not because their objections were un- 
 reasonable, the taxing-master could not allow any of the plaintiff's 
 costs of meeting those objections. If the plaintiff considers that in 
 consequence of unreasonable objections he has incurred extra costs, 
 he ought to ask the Court to direct the taxing-master to consider 
 that question, and to direct that defendants shall pay the costs so 
 incurred. (42 L. T. 510 ; 38 W. B. 455.) 
 
 Presumption that patentee is inventor, p. 363 (I), (m). 
 
 Principle as subject-matter of patent. See under Subject-matter, pp. 540 
 to 544. 
 
896 PEIVY COUNCIL, 
 
 Privy Council. Jurisdiction of, to grant extension, pp. 105, 105. 
 Rules as to petition to, pp. 98, 99. 
 
 Procedure. See Practice. 
 
 Process, as subject-matter of patent. See under Subject-matter, pp. 511 
 to 518. 
 
 Profits. Account of. See Practice, Account, pp. 367 to 373. 
 
 Prohibition to Attorney-General will not lie, pp. 15 Qi), 396 (o). 
 
 (a) Van Gelder's Patent. C. A. [1888] 
 
 The Attorney-General is not a Court, and no proHbition will He 
 to prevent him from granting leave to amend by disclaimer. 
 (6 0. B. 22.) 
 
 Prolongation of Patent. See Extension. 
 
 Proof. See Practice, Evidence, pp. 358 to 366. 
 
 Protection by Specification. See Specification. 
 
 Provisional Protection. 
 
 Patents Act, 1883, s. 14. Where an application for a patent in respect 
 of an invention has been accepted, the invention may during the period 
 between the date of the application and the date of sealing such patent be 
 used and published without prejudice to the patent to be granted for the 
 same ; and such protection from the consequences of use and publication is in 
 this Act referred to as provisional protection. 
 
 Protection ly Complete Specification. 
 
 15. After the acceptance of a complete specification and until the date of 
 sealing a patent in respect thereof, or the expiration of the time for sealing, 
 ■the applicant shall have the like privileges and rights as if a patent for the 
 invention had been sealed on the date of the acceptance of the complete 
 specification : Provided that an applicant shall not be entitled to institute any- 
 proceeding for infringement unless and until a patent for the invention has 
 been granted to him. 
 
 Provisional Specification. See Specification, pp. 411 to 414. 
 
 Publication in a book or specification. See under Novelty, pp. 244 to 261 
 by experiments. See under Novelty, pp. 261 to 265 
 by sale. See xinder Novelty, pp. 265 to 267. 
 
 Public Use. See under Novelty, pp. 232 to 242. 
 
 Rectification of Register. See under Register. 
 
 Refusal of grant by comptroller. 
 
 Patents Act, 1883, sect. 86. The comptroller may refuse to grant a 
 patent for an invention, or to register a design or trade mark, of which the 
 use would, in his opinion, be contrary to law or moraUty. 
 
 Register. 
 
 to be kept at Patent Office. Patents Act, 1883, s. 23, p. 397 
 to Toe prima fcbcie evidence, sect. 23 (2), p. 397 
 trust not to be entered on, sect. 85, p. 397 
 
EEGISTEE. 397 
 
 proprietor to be entered on. Patents Acts, 1883, sect. 87, and 1888, 
 s. 21, p. 397 . , , 
 
 to be open to public. Patents Acts, 1883, s. 88, and 1888, s. 22, p. 397, 
 certified extracts from, to be evidence, sect. 89, p. 75 
 rectification of. Patents Acts, 1883, ss. 90 and 91, and 1888, s. 23, p. 397 
 making false entry in, sect. 93, p. 398. 
 
 must be proved on action for infringement by assignee, p 399 (w) 
 absence of, need not be specified in notices of objection, p. 399 (w) 
 
 where objection to, cannot be maintained, p. 400 (z) 
 may be expunged by Court, sect. 90, p. 397 
 or corrected, sect. 90, p. 397 
 relates back to day of assignment, p. 400 (z). 
 
 Megister. 
 
 Patents Act, 1883, sect. 23. (1) There shaU be kept at the Patent Officfe 
 a book called the Register of Patents, wherein shall be entered the names and 
 addresses of grantees of patents, notifications of assignments and of trans- 
 missions of patents, of licences under patents, and of amendments, extensions, 
 and revocations of patents, and such other matters affecting the validity or 
 proprietorship of patents as may from time to time be prescribed. 
 
 (2.) The Register of Patents shaU be prima facie evidence of any matters by 
 this Act directed or authorised to be inserted therein. 
 
 (3.) Copies of deeds, licences, and any other documents affecting the 
 proprietorship in any letters patent or in any licence thereunder, must be 
 supplied to the comptroller in the prescribed manner for filing in the Patent 
 OflSce. 
 
 Sect. 85. There shall not be entered in any register kept under this Act, 
 or be receivable by the comptroller, any notice of any trust expressed, 
 implied or constructive. 
 
 Sect. 87 (amended by 51 & 52 Vict. c. 50, sect. 21). "Where a person 
 becomes entitled by assignment, transmission, or other operation of law to 
 a patent, the comptroller shall on request, and on proof of title to his 
 satisfaction, cause the name of such person to be entered as proprietor of 
 the patent, in the Register of Patents. The person for the time being entered 
 in the Register of Patents, as proprietor of a patent, shall, subject to ths 
 provisions of this Act and to any rights appearing from such register to be 
 vested in any other person, have power absolutely to assign, grant licences as 
 to, or otherwise deal with, the same, and to give effectual receipts for any 
 consideration for such assignment, licence, or dealing. Provided that any 
 equities in respect of such patent may be enforced in like manner as 'vx 
 respect of any other personal property. 
 
 Sect. 88 (amended by 51 & 52 Vict. c. 50, sect. 22), Every register 
 kept under tbis Act shall at all convenient times be open to the inspection of 
 the public, subject to the provisions of this Act and to such regulations as 
 may be prescribed ; and certified copies, sealed with the seal of the Patent 
 Office, of any entry in any such register shall be given to any person 
 requiring the same on payment of the prescribed fee. 
 
 Sect. 90 (amended by 51 & 52 Vict. c. 50, sect. 23). (1.) The Court may 
 on the application of any person aggrieved by the omission without sufficient 
 cause of the name of any person or of any other particulars from any register 
 -kept under this Act, or by any entry made without sufficient cause in any such 
 register, make such order for making, expunging or varying the entry, as 
 the Court thinks fit ; or the Court may refuse the appKcation ; and in either 
 case may make such order with respect to the costs of the proceedings as the 
 Court thinks fit. , 
 
 (2.) The Court may in any proceeding under this section decide any 
 
398 REGISTER : 
 
 question that it may he necessary or expedient to decide for the rectification 
 of a register, and may direct an issue to he tried for the decision of any 
 question of fact, and may award damages to the party aggrieved. 
 
 (3.) Any order of the Court rectifying a register shall direct that due notice 
 of the rectification be given to the comptroller. 
 
 Sect. 91. The comptroller may on request in writing accompanied by the 
 prescribed fee. (a) Correct any clerical error in or in connection with an 
 application for a patent ; or (J) Correct any clerical error in the name style 
 or address of the registered proprietor of a patent. 
 
 Sect. 93. If any person makes or causes to be made a false entry in any 
 register kept under this Act, or a writing falsely purporting to be a copy of 
 an entry in any such register or produces or tenders or causes to be produced 
 or tendered in evidence any such writing, knowifig the entry or writing to be 
 false, he shall be guilty of a misdemeanour. 
 
 Sect. 114. (1) The registers of patents and of proprietors kept under any 
 enactment repealed by this Act shall respectively be deemed parts of the 
 same book as the register of patents kept under this Act. 
 
 Patent Etjlbs, 1890, rule 67. Upon the sealing of a patent the 
 comptroller shall cause to be entered in the Register of Patents the name, 
 address, and description of the patentee as the grantee thereof, and the title of 
 the invention. 
 
 68. Where a person becomes entitled to a patent or to any share or interest 
 therein, by assignment either throughout the United Kingdom and the Isle 
 of Man, or for any place or places therein, or by transmission or other 
 operation of law, a request for the entry of his name in the register as such 
 complete or partial proprietor of the patent, or of such share or interest 
 therein, as the ease inay be, shall be addressed to the comptroller, and left at 
 the Patent Office. 
 
 69. Such request shall in the case of individuals be made and signed by 
 the person requiring to be registered as proprietor, or by his agent duly 
 authorised to the satisfaction of the comptroller, and in the case of a body 
 corporate by their agent, authorised in like manner. 
 
 70. EVery such request shall state the name, address, and description of 
 the person claiming to be entitled to the patent, or to any share or interest 
 therein, as the case may be (hereinafter called the claimant), and the 
 particulars of the assignment, transmission, or other operation of law, by 
 virtue of which he requires to be entered in the register as proprietor, so as to 
 show the manner in which, and the person or persons to whom, the patent, 
 or such share or interest therein as aforesaid, has been assigned or transmitted. 
 
 71. Every assignment and every other document containing, giving effect to, 
 or being evidence of, the transmission of a patent or affecting the proprietorship 
 thereof as claimed by such request, except such documents as are matters of 
 record, shall be produced to the comptroller, together with the request 
 above prescribed, and such other proof of title as he may require for his 
 satisfaction. 
 
 As to a document which is a matter of record, an official or certified copy 
 thereof shall in like manner be produced to the comptroller. 
 
 72. There shall also be left with the request an attested copy of the 
 assignment or other document above required to be produced. 
 
 As to a document which is a matter of record, an official or certified copy 
 shall be left with the request in lieu of an attested copy. 
 
 73. A body corporate may be registered as proprietor by its corporate name. 
 • 74. Where an order has been made by Her Majesty in Council for the 
 extension of a patent for a further term or for the grant of a new patent, or 
 where an order has been made by the Court for the revocation of a patent or 
 
Begistration. 399 
 
 ;tlie rectification of the register under section 90 of the Act of 1883, or 
 otherwise affecting the validity or proprietorship of the patent, the person in 
 whose favour such order has been made shall forthwith leave at the Patent 
 Office an office copy of such order. The register shall thereupon he rectified 
 or the purport of such order shall otherwise be duly entered in the register, as 
 the case may be. 
 
 75. Upon the issue of a certificate of payment under Rule 48, the 
 comptroller shall cause to be entered in the Eegister of Patents a record of 
 the amount and date of payment of the fee on such certificate. 
 
 76. If a patentee fails to make any prescribed payment within the 
 prescribed time or any enlargement thereof duly granted, such failure shall bp 
 duly entered in the register. 
 
 77. An attested copy of every licence granted under a patent shall be left 
 at the Patent Office by the licensee, with a request that a notification thereof 
 may be entered in the register. The licensee shall cause the accuracy of 
 such copy to he certified as the comptroller may direct, and the original 
 licence shall at the same time be produced and left at the Patent Office if 
 required for further verification. 
 
 78. The register of patents shall be open to the inspection of the public on 
 every week day between the hours of ten and four, except on the days and 
 the times following : — 
 
 (a.) Christmas Day, Good Friday, the day observed as Her Majesty's 
 birthday, days observed as days of public fast or thanks- 
 giving, and days observed as holidays at the Bank of England ; or 
 
 (b.) Days which may from time to time be notified by a placard posted 
 in a conspicuous place at the Patent Office : 
 
 (c.) Times when the register is required for any purpose of official use. 
 
 Begistration. 
 (v) In re Green's Patent. [1857] 
 
 A patentee, in 1853, assigned his patent, but the assignees omitted 
 to register it. In 1855 the patentee assigned the patent to another 
 person, who registered it on the same day. The first assignees 
 registered their assignment a week afterwards. The Court, in 
 1857, on the motion of the first assignees, ordered the register of the 
 second assignment to be expunged, and with cos'ts, under the 3Bth 
 sect, of 15 & 16 Vict. c. 83. (24 Beav. 145.) 
 
 (w) Chollet «. Hoffman. . [1857]. 
 
 To a declaration for the infringement of a patent, brought by aa 
 alleged assignee (by deed) of the patent, the defendant pleaded, by 
 denying the assignment, modo et forma. On the trial, it appeared 
 that an instrument of assignment had been executed by the 
 patentee, but that it had not been registered under 16 & 16 Vict, 
 c. 83 : — Eeld, that as, by sect. 35, the original patentee was, until 
 the entry of the registration, to be deemed and taken to be the 
 sole and exclusive proprietor of the patent, the defendant was 
 entitled to a verdict, although the objection was not specified in 
 the notice of objections delivered by him. (7 Ell. & B. 686 ; 3 Jur., 
 N. S. 935 ; 26 L. J., Q. B. 249.) 
 (as) In re Moeey's Patent. [1858] 
 
 Under the 38th sect, of the 15 & 16 Vict. o. 83, the Court could, on 
 motion, expunge an entry fraudulently made in the Eegister of 
 
400 KEGISTER: 
 
 Proprietors of Patents ; it could direct any facts relating to the 
 proprietorship to be inserted on the register, but not the legal 
 inference to be drawn from them. A patentee assigned half a 
 patent to A., and afterwards he assigned the whole to B. by deed, 
 reciting that he had already granted a licence, to work and use, to 
 A. B.'s assignment was first registered : — Seld, that B. had con- 
 structive notice of A.'s rights, and an entry was ordered to be 
 made in the register, that the licence referred to in B.'s assign- 
 ment was the deed of assignment to A. subsequently entered, 
 (25 Beav. 581 ; 6 W. B. 612.) 
 
 (y) In re Horslet akd Knighton's Patent. [1869] 
 
 The Court will, on the motion of the persons aggrieved, correct 
 an entry in the Kegister of Proprietors of Patents, which purports 
 to affect the right of persons not parties to the deed registered. 
 One of two joint patentees by deed assigned his interest ia the 
 patent to a third person, and released to him all the rights of 
 action, &c., against him of both the patentees, and the deed was set 
 out completely in the Eegister of Proprietors : — Meld, that the 
 other patentee was entitled, under the 38th section of the Patent 
 Law Amendment Act, 1852, to have the entry struck out. (L. B., 
 8 Eg. 475 ; 39 L. J., Ch. 157.) 
 
 There was no right of appeal against an order made by the 
 Master of the Eolls to expunge an entry in the register, (i, B., 
 4 a. 784; 17 W.B. 1000.) 
 
 (z) Hassall v. Weight. Ch. [1870] 
 
 W., a patentee, agreed with H., that H. should be the sole manu- 
 facturer under the patent. This agreement was embodied in a 
 deed, which was prepared by the solicitor of W., H. employing no 
 legal adviser. The deed was not registered in accordance with the 
 Patent Law Amendment Act, 1852, s. 35, until after bill filed. 
 Subsequently W. granted a right of manufacture to M., who had 
 full notice of the previous agreement with H. The grant to M. 
 was also unregistered : — Held, that, under the circumstances, W. 
 could not avail himself of an objection based upon the non-regis- 
 tration of the agreement with H., and that as the grant to M. was 
 also unregistered, M. also was not entitled to take the objection. 
 Semhle, that the subsequent registration had relation back to the 
 date of the agreement. (40 L. J., Ch. 145.) 
 
 (a) In re Morgan's Patent. [1876] 
 
 This was a motion by a transferee of letters patent to have an 
 entry of a subsequent assignment of the same letters patent in the 
 Eegister of Proprietors of Patents expunged, under sect. 38 of 
 15 & 16 Vict. c. 88. A difSculty arose how the notice of motion 
 should be intituled, having regard to the Judicature Act, 1873, and 
 it was Held, that it should be intituled in the High Court of 
 Justice. (24 W. B. 245.) 
 
 (6) In re Myer's Patent. [1882] 
 
 Under the Patent Law Amendment Act, 1852, sect. 38, and the 
 
EEVOCj^TION". '401 
 
 'Judicature Acts, a judge of the High Court had jurisdiction to 
 expunge an entry. . (W. N. 1882, 63.) 
 
 (6*) Parnell's Patent. [1888] ' 
 
 Parnell and Halkett having signed a document relating to their 
 shares in a patent proposed to he taken out loj Parnell, and Parnell 
 having taken out a patent, Halkett applied to the comptroller to 
 register the document. The comptroller refused on the ground 
 that the document was dated before the grant of the pateHt.^ — 
 Held, that, -whether this was a good ground or not, the refusal 
 was justified, because the document did not show that the applicant 
 was a proprietor. (5 0. B. 126.) 
 
 (c) Heap v. Haetley. C. A. [1889] 
 
 The patentee had granted to the plaintiff an exclusive licence 
 to use his invention within a certain district, and the licence was 
 duly registered. The defendants bought machines outside the 
 district, which had been purchased from the patentee, and brought 
 them into the district and used them : — Seld, at the trial, that 
 registration was not in itself notice to the world, and that^ the 
 defendants had not actual notice of the licence. (6 0. B. 603.) — , 
 Held, by the Court of Appeal, that the plaintiff, being only a 
 licensee, was not entitled to sue in his own name without joining 
 the patentee, and that it was therefore immaterial to consider 
 whether sect. 87 of the Act of 1883 did or did not render the act 
 of the defendants an infringement. (42 Ch. D. 461 ; 6 0. B. 495.) 
 
 Bemuneration of inventor considered on petition for extension, pp. 120- 
 127. 
 
 Benewal. The payments of £50 and £100 for renewal are now required 
 at the ends of the fourth or eighth year from the date of the patent, instead of 
 at the ends of the fourth or seventh year, see p. 143. 
 
 Repair of patented machines, p. 21 (e), 182 (i). 
 
 Kepeal. See Revocation. 
 
 Repugnancy between title and description, see pp. 565-569 
 between.provisional and complete specification, pp. 414-421. 
 
 Revocation of Patent. 
 
 petition to Court for. Patents Act, 1883, sect. 26, p. 402 
 
 grounds of, sect. 26 (3), p., 402 
 
 by whom presented, sect. 26 (4), p. 403 
 
 particulars of objections on, sect. 26 (5), and (6), p. 402 
 
 defendant to begin, sect. 26 (7), p. 402 
 
 new patent granted where successful, sect. 26 (8), p. 402 
 
 joint patentees both to be made defendants, p. 402 (d) 
 
 petitioner may interrogate, p. 403 (/) 
 
 petition brought under wrong sub-section of sect. 26, p. 403 (^r) 
 
 petition for, is in every sense an aclion, pp. 403 (i), 404 (f) 
 
 and may be sent to Assizes, p. 403 (i) 
 
 particulars not confined to grounds in section, p. 403 (h) 
 
 2 D 
 
402 EEVOCATION. 
 
 Patents Ag*, 1883, sect. 26. (1.) The proceeding by scire facias tp 
 repeal a patent is hereby abolished, 
 
 (2.) Eevocation of a patent may be obtained on petition to the Court. 
 (3.) Every ground on which a patent might, at the cominenoeinent of thi^ 
 Act, be repealed by , scire facias sball be available by way of defence to au 
 action of infringement and shall also be a ground of revocation. 
 (4.) A petition for revocation of a patent may be presented by-^ 
 (a.) The Attorney-Greneral in England or Ireland, or the Lord Advocate 
 
 in Scotland : 
 (6.) Any person authorised by the Attorney-General in England or 
 
 Ireland, or the Lord Advocate in Scotland : 
 (c.) Any person alleging that the patent was obtained in fraud of his 
 rights, or of the rights of any person under or through whom he 
 claims : 
 (d.) Any person alleging that he, or any person under or through whom 
 he claims, was the true inventor of any invention included in the 
 claim of the patentee : 
 (e.) Any person alleging that he, or any person under or through whom 
 he claims an interest in any trade, business, or manufacture, had 
 publicly manufactured, used, or sold, within this realm, before the 
 date of the patent, anything claimed by the patentee as his 
 invention. 
 (5.) The plaintiff must deliver with his petition particulars of the objections 
 on which he means to rely, and no evidence shall, except by leave of the 
 Court or a judge, be admitted in proof of any objection of which particulars 
 are not so delivered. 
 
 (6.) Particulars delivered may be from time to time amended by leave of 
 the Court or a judge. 
 
 (7.) The defendant shall be entitled to begin, and give evidence in support 
 of the patent, and if the plaintiff gives evidence impeaching the validity of 
 the patent the defendant shall be entitled to reply. 
 
 (8.) Where a patent has been revoked on the ground of fraud, the 
 comptroller may, on the application of the true inventor made in accordance 
 with the provisions of this Act, grant to him a patent in lieu- of and bearing 
 the same date as the date of revocation of the patent so revoked, but the, 
 patent so granted shall cease on the expiration of the term for which the 
 revoked patent was granted. 
 
 (d) Eegina v. Betts and Stockee. [1850] 
 
 Where a patent had been granted to two jointly, and one of the 
 patentees had assigned all his interest to the other, Held, that both 
 were rightly made defendants in an action of scire facias.. (19 L. J., 
 Q. B. 631.) 
 
 (e) Walker v. Hydeocaebon Syndicate. [1884] 
 
 A patentee, whose patent was dated in 1875, petitioned for the 
 revocation of two patents, dated 1880 and 1881, for improvements 
 in apparatus for generating heat from hydrocarbon oils. Evidence 
 of a specification prior to 1875, describing a method similar to the 
 petitioner's was admitted, although no notice had been given of it, 
 to show the state of knowledge in 1875: — Held, that, eliminating 
 from the petitioner's patent matters of common knowledge, the 
 inventions claimed were not similar, and the petition was dismissed. 
 (Griff. 238 ; 2 O.B. 3.) 
 
EEVOCATION. 403 
 
 (/) In re Haddan's Patent. . [1885] 
 
 ■ It is the practice now, if the Court thinks fit, to allow a peti- 
 tioner, under sect. 26 of the Patents Act of 1883, to administer 
 interrogatories to the claimant of a patent. (W. N. 1884, 192; 
 54 L. J., Ch. 126 ; 51 L. T. 190 ; 33 W. B. 96.) The petitioner 
 showed that for many years he had been manufacturing food by a 
 process similar to that patented : — Seld, that the patent must be 
 revoked. (2 0. B. 218.) 
 
 (gi) /« re Avery's Patents. C.A. [1887] 
 
 Sect. 26, sub-sect. 4 (c) of the Patents Act of 1883 applies only to 
 cases of fraud, and will not be extended to cases of mistake. Avery, 
 a subject of the United States, gave a power of attorney to his agent 
 in England with instructions to take out a patent. The agent 
 appointed Lindsay, who was interested in the proposed patent, his 
 substitute, as Avery's attorney, to apply for the. grant. Lindsay 
 being advised by a patent agent that he might properly describe 
 himself as the true and first inventor, applied for and obtained a 
 grant to himself in his own name, without declaring, as required, 
 that the application was made on communication from abroad. 
 Kimber, a solicitor, as attorney fur Avery, presented a petition for 
 the revocation of the patent, and a declaration that Avery was the 
 first and true inventor. The petition contained no distinct allega- 
 tion that Avery was the first and true inventor. Stirling, J., 
 ordered the petition to be amended, by making Avery sole peti- 
 tioner, and all persons beneficially interested in the patent 
 • respondents : — Held, that the petition was clearly intended to be 
 under clause (c), and, therefore failed, as there was no fraud 
 proved; but it was dismissed, without prejudice to any petition 
 which Avery might present under clause (S) of sub-sect. 4. (36 
 Clh.D.,307; 4 O. B. 152, 322.) 
 
 (Ji) In re Moegan's Patent. [1888] 
 
 Any person having any qualification mentioned in sect. 26 of the 
 Patents Act of 1883 may petition for revocation. The petitioner 
 alleged that he had, many years prior to the date of the patent, 
 publicly made and sold carriages, made according to the alleged 
 invention; and that, by reason of the matters set forth in the 
 petition, and of the other matters appearing in the particulars of 
 objections (which related to acts of prior user by other persons), 
 the letters patent were invalid : — Held, that when the petitioner 
 was once qualified, and his petition presented, it was open to him 
 to impeach the patent on any lawful ground. (58 L. T. 713 ; 
 5 0. B. 186.) 
 
 (i) In re Edmond's Patent. [1889] 
 
 A petition for revocation is in the nature of an " action " or 
 "matter," so that there is power to order it to be tried at the 
 assizes. (W. N. 1888, p. 234.) The patent was revoked, on the 
 ground that the patentee had obtained it from the petitioner, and 
 that the petitioner had commonly used the invention before the 
 date of the patent, (6 0. B. 365.) 
 
 2 D 2 
 
404 EEVOCATIOK 
 
 (j) In re Goulard and Gibbs' Patent. C. A. [1889] ) 
 
 ' A petition fot tlie revocation of a patent, tinder sect. 26 of the 
 Patents Atjt of 1883, is in every sense an action, except that it is not 
 commenced by a writ, and ought to be tried in the way in which 
 actions usually are tried, and set down accordingly. The respon- 
 dents to such a petition are entitled to an opportunity of calling 
 viva voce evidence. (34 Ch. B. 396; W. N. 1888, 168.) The 
 patent in question was for a new system of distributing electricity 
 for the production of light and power. The system consisted of a 
 combination of (1) an alternating ciirreiit of high tension ; (2) the 
 passage of such current through a number of electrical generators 
 of special construction ; (3) the formation by such passage of 
 induced currents, the quality and value of which depend only on 
 the construction of the secondary cells of the generators ; (4) the 
 utilisation of these induced currents for the production of light 
 or motive power. The Court of first instance Held, that there was 
 not a fatal variance between the complete and provisional specifica- 
 tion ; but that the complete specification did not sufficiently de- 
 scribe the invention, and that the invention was not subject-matter 
 for a patent. (5 0. iJ. 189.) — Held, by the Court of Appeal, that 
 there was no anticipation, as no one had previously hit on a com- 
 bination of (1) an electric dynamo-machine producing alternate 
 cunents of high tension ; (2) a long main wire ; (3) induction 
 coils, speciallycorjstructed, placed along it at intervals, to produce 
 light or motion where required ; that the invention was new and 
 useful, and that the specification was sufficient ; but Held, that _ 
 taking the construction of the amended specification, for which the 
 patentees contended, viz. to include a combination of a dynamo 
 giving alternate currents of high tension with any induction coils 
 such as those described, the patent was hopelessly bad; (1) as 
 being an entirely different invention from that described in the pro- 
 visional specification ; and (2) because tlie amendment had greatly 
 extended the scope of the patent. (TF. N. 1889, 60 ; 6 0. B. 216.) 
 
 (h) Duummond's Patent. [1889] 
 
 The patentee, being domiciled and resident in Scotland, a copy 
 of a petition for revocation and of the particulars of objections 
 had been served on him there ; and he had written to the peti- 
 tioner's solicitors, that he did not intend to appear, because he was 
 riot subject to the jurisdiction of the English Courts. Korth, J., 
 made an order, that, unless the respondent should appear and 
 object on or before a day named, the petition should be tried with 
 viva, voce evidence, and be set down in the witness actions. If the 
 respondent appeared, it would be open to him to dispute the 
 jurisdiction. (43 Ch. B. 80 ; W. N. 1889, 195 ; 6 0. B. 576.) 
 
 (Z) Edge's Patent. [1890] 
 
 The petitioner. Edge, being the owner of two prior patents for 
 a similar invention, had already brought an action in the Queen's 
 Bench Division, alleging that the patent was applied for so that a 
 third party might fraudulently use the name of Edge. This 
 
■ SCOTLAND. 405- 
 
 ^petition for : revocation was transferred to be tried with the action. 
 (W. N. 1890, p. 149.) . 
 
 Revocation of Order of Privy Council as to extension. See p. 134 (S). 
 
 Rival patentees, application by. See pp. 54-56 
 
 Court of Chancery liid not interfere between, by inj unction. See p. 331 (r). 
 
 Royal Arms. Penalty for using without a licence. See Offences, p. 268. 
 
 Royalties, 
 
 agreement for suspension of, for non-restraint of infringement, p. 214 (/) 
 
 applies only after notice of infringement to grantor, p. 214 (/) 
 
 and the lapse of a reasonable time, p. 214 (/) 
 
 covenant to pay, not qualifi' d by covenant to account, p. 213 (z) 
 
 paid for use of invalid patent, cannot be recovered back, p. 211 (s). 
 
 Rules of judicial committee, pp. 98, 99 
 
 of construction of specifications, pp. 460-480. 
 
 of practice before Law Officer, p. 380 
 
 of Patent Office, for index see at the end of Table of Cases. 
 
 Sale, 
 
 of patented Article. 
 
 publication by. See under Novelty, pp. 265, 266 
 infringement by. See under Infringement, pp. 163-171 
 after expiration of term restrained, if manufactured before expiration, 
 p. 349 («) (u). 
 
 of Patent, 
 
 contract for, does not imply warranty of title, pp. 68 (w), (o) 71 (z) 
 
 or that patentee is true and first inventor, pp. 68 (re), 70 (v) 
 
 hut only that the patent has been granted, p. 68 (o) 
 
 set aside for fraud, p. 67 (i) 
 
 time of the essence of a contract for, p. 67 (k) 
 
 acceptance of part payment for, p. 67 (Jc) 
 
 contract for, on completion of patent, pp. 68 (m), 69 (f) 
 
 of part of, pp. 69 (q), 287 (r!). 
 
 Sales, 
 
 account of. See pp. 367-373. 
 Scientific principles are not the proper subject of a patent. See pp. 540-544. 
 
 Scire Facias. 
 
 Patents Act, 1883, sect. 26. (1.) The proceeding by scire facias to repeal 
 a patent is hereby abolished. [See under Bevocation.] 
 
 Scotland. 
 
 Patents Act, 1883, sect. 107. In any action for infringement of a patent 
 in Scotland the provisions of this Act, with respect to calling in the aid of an 
 assessor, shall apply, and the action shall be tried without a jury, unless the 
 Court shall otherwise diiect, but otherwise nothing shall affect the jurisdiction 
 and forms of process of the Courts in Scotland in such an action or in any 
 action or proceeding respecting a patent hitherto competent to those Courts. 
 
 For the purposes of this section " Court of Appeal " shall mean any Court to 
 which such action is appealed. 
 
 108. In Scotland any offence under this Act declared, to be punishable on 
 summary conviction may be prosecuted in the Sheriff Court. 
 
 109. (1.) Proceedings in Scotland for revocation of a patent shall be in 
 the form of an action of reduction at the instaijce of the Lord Advocate, or at 
 
406 SEA. 
 
 the instance of a party having interest with his concurrence, which 
 concurrence may be given on just cause shown only. 
 
 (2.) Service of all writs and summonses in that action shall be made 
 according to the forms and practice existing at the commencement of this 
 Act. 
 
 Sea, 
 
 acts done at, p. 159 (h) 
 
 acts done on foreign ship in British waters, Patents Act, 1883, sect. 43, 
 p. 145. 
 
 Newall v. Elliott. [1864] 
 
 A patent limited to the United Kingdom, the Channel Islands, 
 and the Isle of Man, cannot be infringed by any act done on board 
 an English vessel at Malta or on the high seas. (10 Jur., N. S. 
 954.) 
 
 Seal. 
 
 Patents Act, 1883, sect. 84. There shall be a seal for the Patent OfBce, 
 and impressions thereof shall be judicially noticed and admitted in evidence. 
 
 Sealing of Patent, not to prevent sealing of another patent on an earlier 
 
 application. Patents Act, 1883, s. 13, p. 80. 
 
 Secret Process, evidence of will be heard m camera, 
 
 (Z) Badische Anilin und Soda Fabrik v. Levinstein. [1883] 
 
 Where in an action for infringement of a patented proces-s tte 
 defendant alleges that he attains his result by a secret process, 
 differing from that of the plaintiff, he will not be compelled to 
 answer questions which would disclose that process, but he may, 
 if necessary, describe it to the Court in camera. (24 Ch. D. 166.) 
 
 Secretary of State. 
 
 Patents Act, 1883, sect. 44. (1.) The inventor of any improvement in 
 instruments or munitions of war, his executors, administrators, or assigns 
 (who are in this section comprised in the expression the inventor) may 
 (either for or without valuable consideration) assign to Her Majesty's 
 Principal Secretary of State for the War Department (hereinafter referred to 
 as the Secretary of State), on behalf of Her Majesty, all the benefit of the 
 invention and of any patent obtained or to be obtained for the same ; and the 
 Secretary of State may' be a party to the assignment. 
 
 (2.) The assignment shall effectually vest the benefit of the invention and 
 patent in the Secretary of State for the time being on behalf of Her Majesty, 
 and all covenants and agreements therein contained for keeping the invention 
 secret and otherwise shall be valid and effectual (notwithstanding any want 
 of valuable consideration), and may be enforced accordingly by the Secretary 
 of State for the time being. 
 
 (3.) Where any such assignment has been made to the Secretary of State, 
 he may at any time before the application for a patent for the invention, or 
 before publication of the specification or specifications, certify to the 
 comptroller his opinion that, in the interest of the pulslio service, the 
 particulars of the invention and of the manner in which it is to be performed 
 should be kept secret. 
 
 (4.) If the Secretary of State so certifies, the application and specification 
 or specifications with the drawings (if any), and any amendment of the 
 specification or specifications, and any copies of such documents and 
 
SPECIFICATION. 407 
 
 drawings, shall, instead of being left in the ordinary manner at the Patent 
 Office, be delivered to the comptroller in a packet sealed by authority of the 
 Secretary of State. 
 
 (5.) Such packet shall until the expiration of the term or extended term 
 during which a patent for the invention may be in force, be kept sealed by the 
 comptroller, and shall not be opened save under the authority of an order of 
 the Secretary of State, or of the law oflScers. 
 
 (6.) Such sealed packet shall be delivered at any time during the con- 
 tinuance of the patent to any person authorised by writing under the hand of 
 the Secretary of State to receive the same, and shall if returned to the 
 comptroller be apiain kept sealed by him. 
 
 (7.) On the expiration of the term or extended term of the patent, such 
 sealed packet shall be delivered to any person authorised by writing under the 
 hand of the Secretary of State to receive it. 
 
 (8.) Where the Secretary of State cerlifies as aforesaid, after an application 
 fur a patent has been left at the Patent Office, bat before the publication of 
 the specification or specifications, the application specification or specifica- 
 tions, with the drawings (if any), shall be forthwith placed in a packet 
 sealed by authority of the comptroller, and such packet shall be subject tj 
 the foregoing provisions respecting a packet sealed by authority of the 
 Secretary of State. 
 
 (9.) No proceeding by petition or otherwise shall lie for revocation of a 
 patent granted for an invention in relation to which the Secretary of State 
 ha's certified as aforesaid. 
 
 (10.) No copy of any specification or other document or drawing, by this 
 section required to be placed in a sealed packet, shall in any manner whatever 
 be published or open to the inspection of the public, but save as in this section 
 otherwise directed, the provisions of this part of this Act shall apply in 
 respect of any such invention and patent as aforesaid. 
 
 (11.) The Secretary of State may, at any time by writing under his hand, 
 waive the benefit of this section with respect to any particular invention, and 
 the specifications documents and drawings shall be thenceforth kept and 
 dealt with in the ordinary way. 
 
 (12.) The communication of any invention for any improvement in instru- 
 ments or munitions of war to the Secretary of State, or to any person or 
 persons authorised by him to investigate the same or the merits thereof, shall 
 not, nor shall anything done for the purposes of the investigation, be deemed 
 Use or publication of such invention so as to prejudice the grant or validity of 
 any patent for the same. 
 
 Secret User, does not invalidate patent. See Novelty, pp. 242, 243 
 
 Servant, invention by, pp. 46 Qi), 407 (m). 
 
 (m) Bloxam K. Elseb. N. p. [1825] 
 
 If a servant, while in the employ cf his master, makes an inven- 
 iion, that invention belongs to the servant, and not to the master. 
 (1 0. & P. 558 ; By. & Mo, 187.) 
 
 Simultaneous Discoveries, person discovering invention contempo- 
 raneously with patentee may be liable for infringement, p. 157 {y). 
 
 Specification, 
 
 Statutory ptovisions — 
 provisional or complete to accompany application, Patents Act, 1883, 
 sect. 5, p. 410 
 not to be published if abandoned. Patents Act, 1885, sect. 4, p. 1. 
 must commence With title. Patents Act, 1883, sect. 5 (5), p. 410 
 
408 SPECIFICATION. 
 
 provisional, must describe nature of invention, sect. 6, p. 411 
 
 and be aocompapied by drawings if required, sect. 6, p. 411 
 
 form of, sect. 33, p. 146 
 complete, contents of, sect. 5 (4), p. 410 
 
 must end with claim, sect. 5 (5), p. 410 
 
 may refer to drawings left with provisional. Patents Act, 1886, 
 sect. 2, p. 411 
 
 form of, sect. 33, p. 146 
 reference to examiner, Patents Acts, 1883, sects. 6, 7, and 9 ; and : 
 
 sects. 2 and 3, pp. 34, 35 
 time for leaving. Patents Acts, 1883, sect. 8 ; 1885, sect. 3, p. 35 
 acceptance of. Patents Act, 1883, sect. 10, p. 2 
 protection by, sect. 14 and 15, p. 396 
 amendment of, sects. 18 to 21, pp. 10, 11 
 rules as to, on application. Patent Eules, 1890, 18 to 23, p. 37, 
 on foreign application, rules 24 to 28, p. 62, 
 as to drawings accompanying, rules 30 to 33, p. 84. 
 
 first introduction of, pp. 412 (p), 415 (5) 
 
 when published becomes part of final specification, p. 414 (t) 
 
 need only describe nature of invention, pp. 411 (n), 412 (p), (r), 414 (w) 
 
 generality of, p. 412 (r) 
 
 part of, may be omitted from complete specification, pp. 412 (r), 413 (s) 
 
 will not supply defect in complete specification, p. 412 (o) 
 
 abandonment of, pp. 248 (y), 4l4 (y) 
 
 inspection of, p. 60 (s) 
 
 two for same invention by different inventors, may be filed, pp. 55 (k), 
 
 414 (v) 
 does not claim anything, p. 414 («) 
 omission in, p. 418 (e) 
 need not describe mode of carrying out invention, p. 414 (w). 
 
 Variance hetween provisional and complete specifications — 
 variance from title, pp. 565-569 
 
 Court of Chancery granted issue for jury to try the question of, p. 354 (r) 
 when alleged infringement is not covered by provisional, p. 415 (6) 
 claim in complete is not foreshadowed by provisional, p. 420 {f) 
 two instruments mentioned in provisional and only one in com- 
 plete, p. 415 (z) 
 complete specification describes a different invention, p. 418 (d) 
 or an additional invention, p. 418 (e) 
 patent is bad altogether and not only as to addition, p. 418 (/) 
 fresh discoveries as to mode of carrying out invention inserted in 
 complete, pp. 419 {g), 420 (A), (i). 
 
 , Complete specification must he sufficient and intelligible without experiments — 
 . must describe nature of invention, pp. 421 (m), 422 (o), 424 (v), 425 (b), 
 446 (n) 
 and how it is to be performed, pp. 422 (o), 424 («), (z), 425 (J), 430 («), 
 
 432 (b) 
 to secure xiseful novelties to public, pp. 422 (p), (q), 429 (p), (r), 436 (g) 
 and avoid inadvertent infringement, pp. 425 (6), 427 (g), 429 (p), (s), 
 
 446 (o), 447 (s) 
 must be clear, pp. 421 (m), 423 (*), 426 (c), 429 (s), 436 (i), 440 («) 
 precise, pp. 423 (u), 424 («/), (z), 442 (c) 
 fair, honest, and open, pp. 425 (6), 426 (c), 428 (I) 
 not be obstructing, p. 429 (q) 
 sufficiency may be ascertained by experiment, p. 430 (y) 
 
SPECIFICATION. 409 
 
 must be intelligible to persons having skill in the trade, pp. 421 (m), (n), 
 
 422 (j), 424 (w), (x), 426 (d),,(e), 427 (/»'), (i) 
 to persons of ordinary skill, pp. 423 (r), 424 (w), 425 (6), 426 (/), 
 
 427 (i), 429 (s), 430 (s) 
 
 correction of errors by, pp. 421 (re), 430 (i), 431 (y) 
 to mechanics, pp. 421 (I), 428 (m), 430 (a) 
 to artists, pp. 422 (o), 427 (i) 
 to readers of specifications, p. 428 (m) 
 to chemists, pp. 428 (re), 436 (i) 
 
 must be sufficient without experiments, pp. 423 (it), 430 (t) ' 
 
 or invention, pp. 421 Q), 425 (6), 426 (/), 428 (A) 
 or addition, pp. 421 (l), 424 (a;), 426 (/) 
 or correction, pp. 426 (/), 430 {t) 
 or repeated trials, pp. 421 (I), 423 (u) 
 to produce some beneficial effect, pp. 406 (/), 428 (k) 
 whether it is, is a question for the jury, pp. 429 (o), 430 (w). 
 
 Must he candid and not misleading or ambiguous — 
 must be candid as to use of cheap materials, p. 436 (i) 
 as to saving of labour, p. 437 (k) 
 
 as to mode of construction, pp. 438 (I), 442 (6), 443 (d) 
 as to improvements made before filing of specification, pp. 4l9 (g), 
 
 420 (A), 440 (y), (r), 457 (z) 
 must not state many modes when one only will succeed, p. 439 (o), {p) 
 must not be misleading, p. 436 (A) 
 from omissions, pp. 436 (g), 439 (re) 
 from purposely describing, as material, useless things or methods, pp. 
 
 436 (h), ({), 437 (y), 438 (m), 439 (o), (p), 441 (v), 443 (e) 
 from inaccuracy, pp. 436 (i), 441 (x) 
 
 must not be ambiguous, pp. 440 (m), 441 (w), 442 (y), (c), 445 (j) 
 respecting proportions of ingredients, pp. 428 (J), 442 (c), 444 (/*) 
 
 materials to be used, p. 444 (/), (g) 
 when ambiguity affects degree of benefit only, pp. 442 (y), 445 (i). 
 
 Must specify an improvement, and distinguish what is new from what is 
 old — 
 in a patent for a combination, pp. 448 (aj), (y), 449 (z), 450 (/) 
 
 improvements on a known machine, pp. 445 (k), 447 (p), 
 
 449 (c) 
 a prior patent, pp. 446 (m), 447 (<), 448 (w) 
 a partly communicated invention, p. 449 (a) 
 or will be deemed to claim all described, pp. 447 (r), (t), 448 (to) 
 except things notoriously old, pp. 448 (w), 460 (j) 
 or which manifestly form no part of invention, p. 448 (x) 
 may be done by drawings, p. 449 (d). 
 
 Must not claim too much — 
 
 by claiming what is not new, pp. 454 (o), 455 (p), (q), (r), 456 (w), 
 457 (6), 458 (c), (d) 
 
 has not been discovered, pp. 455 (s), 456 (u), (v) 
 will not succeed, pp. 456 (x), 457 (y), 458 (e) 
 application instead of mode of application of principle, pp. 
 224 (d), 454 (o), 456 («), 457 (6), 458 (c), (d), 459 (g) 
 immaterial whether done fraudulently or inadvertently, p. 455 (j) 
 if not claimed as essential, p. 456 (t) 
 
 o/- 
 
 a matt«r of law, for the Court, pp. 461 (I), (p), 468 (i), (f), 469 (re.), 
 
 470 (p) 
 when jury have explained termf, pp. 461 (I), (p), 470 (p) 
 
410 SPECIFICATION. 
 
 to be taken as a wliole, pp. 461 (m), {p), 467 (e) '■ 
 
 and in connection with the title, pp. 462 (s), 467 fc) 
 but cannot be extended by provisional specification, p. 470 (j) 
 nor explained by aid of disclaimer, p. 23 (r) 
 rules of, same as for otber instruments, pp. 471 {u), 480 {n) 
 should be in the most beneficial sense to the advantage of the patentee, 
 Patents Act, 1883, Form D., pp. 460, 480 (n) 
 
 give effect to intention of patentee, p. 468 {g) 
 words to be construed according to their ordinary meanins, p.463 (m) 
 arid read as by a person of ordinary understanding, p. 466 (a) 
 of claim, most strict, pp. 460 (/), 466 (5) 
 but not limited to method described, pp. 468 (h), 470 (o) 
 verbal errors, immaterial when not misleading, pp. 461 Q),(m), (j)),471 («) 
 and discoverable without experiments, p. 471 («) 
 or amounting to false suggestion, p. 471 («) 
 objections to, not encouraged, p. 472 (x). 
 How affected by subsequent discoveries — ■ 
 of new materials, p. 480 (?) 
 of cheaper methods, p. 481 (o) 
 of improvements, pp. 481 (?«), 497 (k) 
 of new equivalents, p. 481 (m) 
 of inutility of part of invention, p. 481 (Z) 
 in construing, p. 480 (v). 
 The claim — 
 where specification contains other new inventions than that claimed, 
 ■ . - pp. 501 (c), 534 (m). 
 Effect of drawings anneoded-^'' ' 
 
 execution of. See rules 30 to 33, pp. 84, 85 
 form part of specification, p. 486 (i), (k) 
 
 may of theinselves form a sufficient specification, pp. 486 (g), (l), 487 (n) 
 may explain body of specification, pp. 486 (h), (/), 487 (m) 
 errors in, p. 471 («) 
 absence of a scale, p. 486 (k) 
 Comparison of specifications, p. 487 
 Evidence of sufficiency of, p. 364. 
 
 Statutory Provisions. 
 
 Patents Act, 1883, sect. 5. (1.) An application for a patent must be 
 made in the form set forth in the First Schedule to this Act, or in such other 
 form as may be from time to time prescribed ; and must be left at, or sent by 
 post to, the Patent Office in the prescribed manner. 
 
 (2.) An application must contain a declaration to the effect that the 
 applicant is in possession of an invention, whereof he, or in the case of a joint 
 application, one or more of the applicants, claims or claim to be the true and 
 first inventor or inventors, and for which he or they desires or desire to 
 obtain a patent ; and must be accompanied by either a provisional or complete 
 specification. 
 
 (3.) A provisional specification must describe the nature of the invention, 
 and be accompanied by drawings, if required. 
 
 (4.) A complete specification, whether left on application or subsequently, 
 must particularly describe and ascertain the nature of the invention, and in 
 what manner it is to be performed, and must be accompanied by drawings, if 
 required. 
 
 (5.) A specification, whether provisional or complete, mUst commence with 
 the title, and in the case of a complete specification must end with a distinct 
 statement of the invention claimed. 
 
Provisional Specification. 411 
 
 , Patents Act, 1886, sect. 2. The requirement of sub-sect. 4 of sect. 5 oif 
 the Patents, Designs and Trade Marks Act, 1883, as to drawings shall not 
 be deemed to be insufficiently complied with by reason only that instead of 
 being accompanied by drawings the complete specification refers to the 
 drawings which accompanied the provisional specification. And no patent 
 heretofore sealed shall be invalid by reason only that the complete specification 
 was not accompanied' by drawings but referred to tliose which accompanied 
 the provisional specification. 
 
 Patents Act, 1883, sect. 6. The comptroller shall refer every application 
 to an examiner, who sball ascertain and report to the comptroller whether the 
 nature of the invention has been fairly described, and the application, 
 specification, and drawings (if any) have been prepared in the prescribed 
 manner, and the title sufficiently indicates the subject-matter of the 
 invention. 
 
 Patents Act, 1888, sect. 2. For sect. 7 of the principal Act the 
 following section shall be substituted, namely : — 7. (1.) If the examiner 
 reports that the nature of the invention is not fairly described, or that the 
 application, specification, or drawings has not, or have not, been prepared in 
 the prescribed manner, or that the title does not sufficiently indicate the 
 subject-matter of the invention, the comptroller may refuse to accept the 
 application, or require that the application, specification or drawings be 
 amended before he proceeds with the application : and in the latter case the 
 application shall, if the comptroller so directs, bear date as from the time when 
 the requirement is complied with. 
 
 [For the remainder of the section, see p. 560.] 
 
 Provisional Specification, 
 
 (w) In re New ALL and Elliott. [1858] 
 
 A. was tlie inventor of " improvements in apparatus employed 
 in laying down submarine electric telegraph wires." In the pro- 
 visional specification the invention wa.s thus described : " The 
 cable or rope containing the insulated wire or wires is passed 
 round a cone, so that the cable in being drawn off the coil is 
 prevented from kinking by means of the cone^ and there is a 
 cylinder on the outside, which prevents the coil from shifting in 
 its place." In the complete specification, after describing the in- 
 vention in the same terms, the inventor proceeded to describe 
 some rings which were placed so as to prevent the bight of the 
 rope from flying out when going at a rapid speed, and at , the end 
 claimed, first, coiling the wire or cable round a cone ; second, the 
 supports placed cylindrically outside the coil round the cone ; 
 third, the use of rings in combination with the cone as described : 
 • — Held, that the validity of the patent was not affected by the 
 omission of all mention of the metal rings in the provisional speci- 
 fication. Byles, J. : " The ofSce of the provisional specification is 
 only to describe generally and fairly the nature of the invention, 
 and not to enter into all the minute details as to the manner in 
 which the invention is to bei carried out ; otherwise the provisional 
 specification must be as full as the complete specification, and 
 drawn with as much care and deliberation. Indeed, the statute 
 itself indicates this distinction between the provisional and^ the 
 
412, SPECIFICATION. . 
 
 final specification ; for, it calls the latter the complete specification, 
 implying that the former is, or may legally be, in some respects ' 
 executory and incomplete. Moreover, it enacts (s. 6) that the 
 provisional specification is to describe the nature of the invention, 
 and no more ; but vrhen the statute comes to speak of the complete 
 specification, its language is altogether different." (4 0. B., N. S. 
 269 ; 4 Jur., N. S. 562 ; 27 L. /., G. P. 337.) 
 
 (o) Mackelcan v. Eennie. [1862] 
 
 Action for the infringement of a patent for " improvements in 
 floating docks." It was proved, during the trial at nisi piins, 
 that the construction was not novel, floating docks having been 
 previously constructed of timber. The plaintiff then alleged his 
 ■ invention to consist entirely in the use^of iron in their construction, 
 according to the mode pointed out in the specification. The 
 provisional specification' did, but the complete specification did 
 not, mention iron as being used in the construction. Erie, C.J. 
 (afSrmed by the Court of Common Pleas), held, that the provisional 
 specification could not be prayed in aid for the purpose of supply- 
 ing a defect in the subsequent complete specification. (13 C. B., 
 N. S. 52.) 
 
 (j>) Newall v. Elliott. [1864] 
 
 Pollock, C.B. : " The object of the statute, which requires a 
 provisional specification, is nothing more than a legislative recog- 
 nition of the custom which called upon every patentee, when he 
 applies for the patent, to give some notion of what his invention 
 is. That has been followed by an Act of Parliament requiring it 
 to be done ; but the object in both cases is to ascertain the 
 identity of the invention, and to make it certain that the patentee 
 shall ultimately obtain his patent for that invention which he 
 presented to the Attorney-General in the first instance .... I 
 have no doubt that the object of the Act of Parliament was not to 
 ascertain the entirety of the invention, but the identity of the 
 invention, so as to enable the Attorney-General, and, in fact, to 
 enable a jury, ultimately to determine whether the invention fully 
 specified was the same invention as that which was presented to 
 the notice of the Attorney-General by the provisional specification." 
 (10 Jur., N. S. 955.) 
 
 (q) FoxwELL V. BosTOCK. Oh. [1864] 
 
 The provisional and complete specifications of a patent ought 
 iiot so to dift'er, as that the nature of the invention as described in 
 the one, shall be materially different from the nature of the inven- 
 tion, as described in the other. (4 De G., J. d S.29S; 12 W. B. 
 723 ; 10 L. T. Bep., N. S. 144.) 
 
 (r) Penn v. Bibby : Penn v. Jack. CIi. [1866] 
 
 Chelmsford, L.C., in the course of his judgment, said : " It seems 
 clear from these sections (Patent Law Amendment Act, 1852, 
 
Provisional Specification. 413 
 
 sects. 6 and 8) that the ofBce of the provisional specification is to 
 describe' the nature of the invention, not with minute particularity, 
 but with sufficient precision and accuracy to inform the law officer 
 what is to be the* subject-matter of the patent. . , . The filing of 
 the provisional specification, by the express provisions of the 
 statute, protects the invention for six months, and gives the 
 patentee, during this period, the like powers, rights, and privileges, 
 as might have been conferred upon him by letters patent. The 
 object of this protection evidently is, to enable the patentee to 
 perfnct his invention by experiments, which, although open and 
 known, will not be a user and publication to the prejudice of 
 letters patent to be afterwards granted, so that he may be in a 
 condition to describe in his complete specification, as the result of 
 his experience, the best manner of performing the invention. It 
 clearly appears, therefore, that the complete specification is, in a 
 sense, supplemental to the provisional specification, not going 
 beyond, nor varying from it as to the nature of the invention, but 
 conveying additional information, which may have been acquired 
 during the currency of the provisional specification, as to the 
 manner in which the invention is to be performed. From this 
 description of the different offices of the two specifications, it 
 follows that upon an issue ' whether the specification, enrolled in 
 pursuance of the letters patent, describes and ascertains the nature 
 of the invention,' if the claim in the complete specification is com- 
 prehended within the terms of the provisional specification, that 
 issue will be satisfied. The relation which the provisional speci- 
 fication bears to the complete specification is much the same as that 
 which, before the Patent Law Amendment Act, the title bore to 
 the specification. The observations of I'indal, C.J., in Cook v. 
 Pearoe, are as applicable to the provisional specification now, as 
 they were to the title formerly." {L. B., 2 Gh. 132.) " Nor is it 
 at all necessary that the complete specification should extend to 
 everything comprehended within the provisional specification. 
 Perhaps a better illustration of this proposition could not be given 
 than that which was offered in the course of the argument. If 
 the patentee were to introduce into his| complete specification 
 everything which was warianted by the terms of the provisional 
 specification, and afterwards found that a part of that which he 
 had claimed would invalidate his patent for want of novelty, 
 or for any other reason, he might afterwards cure the objection by 
 a disclaimer, Now, if he would be allowed to disclaim in such a 
 case, which is matter of indulgence, he must have a right to 
 waive his claim to any portion of the grant which the allowance 
 of the provisional specification had entitled him to demand." 
 (16. 134.) 
 
 («) Thomas v. "Welch. [1866] 
 
 Any part of the provisional specification of a patent may be 
 omitted in the complete specification, if there is no fraud, and the 
 effect «f the remainder is not altered by the omission. (L. B., 
 I C. P. 192; 12 Jur., N. S. 316; 35 L.J., G.P. 200.) 
 
414 SPECIFICATION : 
 
 (i) Stoker v. Todd. M. E. [1876] 
 
 Jessel, M.E. : " A provisional specification was never intended 
 to be more than a mode of protecting an inventor until the time 
 for filing the final specification. It was not intended to contain 
 a complete description of the thing so as to enable any workman 
 of ordinary skill to make it, but only to disclose the invention, 
 fairly, no doubt, but in its rough state, until the inventor could 
 perfect its details. Again, the provisional specification, as such, is 
 not and cannot be known to the public; it is never published 
 unless with the final specification, when they become parts of the 
 same document, except in cases where the time has passed within 
 which the final specification must be filed or treated as abandoned. 
 That being so, we do not find, as a rule, that complete description 
 in a provisional specification which is required to enable a work- 
 man of ordinary skill to carry out the invention." (4 Ch. D, 59.) 
 
 (tt) Lucas v. Miller. [1885] 
 
 It is not the function of a provisional specification to claim 
 anything. (Griff 156 ; 2 0. B. 155.) 
 
 (v) Lister v. Norton. [1886] 
 
 A provisional specification was the creation of the Act of 1852, 
 which enacts, in sect. 8, that the invention therein referred to may, 
 during six months from the date of application, be used and 
 published without prejudice to any letters patent "to be granted 
 for the same." The phrase, " to be granted for the same," 
 means, in this section, and in the 9th section, for the same 
 invention, and does not refer to the application or petition, 
 and accordingly when a second provisional specification is filed 
 during the six, months, there is no express condition in the Act 
 avoiding the protection conferred in respect of the first, and the 
 decision in Oxley v. Holden does not allow the Court to say that 
 there is an implied condition, (firiff 1 48 ; 3 0. U. 199.) 
 
 («)) Woodward v. Sansum. 0. A. [1887] 
 
 A patentee putting in a provisional specification, showing the 
 nature of his invention is not bound to describe the way in which 
 that can be carried out. (4 0. iJ. 166.) 
 
 (x) SiDDELL V. ViCKERS. [1888] 
 
 The remarks made in Woodward v. Sansum (see p. 420 Qij) as to 
 provisional specification cited and approved. (39 Gh. D. 92.) 
 
 Variance between Provisional and Complete Specifications. 
 
 (y) Penn v. Bibby : Penn v. Jack. [1866] 
 
 The provisional specification of a patent for an improvement 
 in the bearings and bushes for the shafts of screw and submerged 
 propellers, described the invention as consisting in employing 
 wood in the construction of such bearings and bushes. ■ The 
 complete specification, after describing the mode in which the 
 
Variance between Provisional and Complete. 415 
 
 rwood was used, claimed the employment of ■wood in the construc- 
 tion of the hearings and hushes " as therein described " : — Meld, that 
 this was no such variation between the provisional and complete 
 specification, as would invalidate the patent. (L. B. 2 Gh. 127 ; 
 36 L. J., Ch. 455 ; 15 L. T. Bep. N. S. 399 ; 15 W. B. 208.) 
 
 («) Thomas v. Welch. [1866] 
 
 The provisional specification of a patent for sewing machines, 
 claimed, amongst other improvements, that a certain instrument 
 which moved the work, " or another acting therewith," acted to 
 hold the work during the insertion of the needle, while the 
 complete specification appeared to describe only one instrument as 
 moving and holding the work : — Held, that such a variance would 
 not invalidate the patent. (L. JR., 1 G. P. 192; 12 Jur., N. S. 
 316 ; 35 L. J., G. P. 200.) 
 
 (a) Weight v. Hitchcock [1870] 
 
 The title of the patent being for improvements in the manu- 
 facture of frills or rufHes, and the provisional specification 
 describing the invention as relating to a particular manufacture of 
 frills and ruffles, the complete specification described the invention 
 as relating to a particular manufacture of frills, ruffles, or 
 trimmings : — Held, that this was no such material variation, as to 
 render the patent invalid. (L. B., 5 Exch. 37 ; 39 L. J., Bxch. 97.) 
 Kelly, C.B., said: "A third point made is that there is an 
 inconsistency between the provisional and the final specification, 
 the word ' trimming ' being added in the latter. But by whatever 
 name it is described, the thing is in itself identical ; it is some- 
 thing attached to any part of the dress, either of men or women, 
 whether it is called the frill of a sleeve, or the ruffle of a shirt, 
 or the trimming of a lady's dress. These are all ejusdem generis, 
 and the description is only important for the purpose of showing 
 for what purpose the product may be ultimately used when it has 
 been manufactured by means of the plaintiff's invention " (L. Bep., 
 5 Mc. 46.) 
 
 (5) Bailey v. Eobekton. H. L. [1878] 
 
 The provisional specification of a patent stated the object of 
 the invention to be the preserving of animal substances in a 
 fresh state ; and the patentees therein claimed the use of a 
 solution composed of a certain quantity of gelatine mixed with 
 bisulphite of lime, but in the complete specification they claimed 
 as " solution No. 1 " a solution composed of bisulphite of lime 
 alone. In an action for infriagement for the use of bisulphite 
 of lime, pure and simple : — Held, that the complete specification, if 
 large enough to cover the employment of bisulphite of lime for 
 the preservation of animal substances as practised by the defenders, 
 would claim an invention larger than and different from that 
 dis.cloged in the provisional specification, and that, therefore, the 
 patent was not valid and effectual to secure to the patentees the 
 
41'6 SPECIS'ICATION : 
 
 -invention used by the defenders, tlxougli it migtt be valid to 
 ■secure to tbem the invention described in the provisional specifica- 
 tion. (3 4pp. Cas. 1055. V 
 
 Lord Blackburn : " When you consider the history of patents in 
 England, there- is not very much difficultj' in construing the 
 statute of 1852, upon which it all, turns, so for as regards this 
 particular case. This is a Scotch case, but I "think that the Scotch 
 patent law has entirely adopted and incorporated the English. 
 The patent law, dating from the time of James, gave a monopoly 
 ,to the invention of the first inventor, it therefore gave a monopoly 
 solely to that invention which was his invention ; he could not 
 , claim an invention greater than the title of the patent, but the 
 titles were of extreme generality. It is in this particular instance 
 .' for improvements in preserving animal substances.' Almost any 
 kind of thing would come under that description ; the mere ;title 
 gave very little instruction. Then in the time of Queen Anne, 
 the attorney-general of the day invented what was obviously, a 
 very great improvement. He made it a condition that the 
 patentee should, within six months, particularly ' describe and 
 ascertain' the invention and the manner in which it was to be 
 performed ; if not, it should be void. If that was done at the end 
 of six months, that specification fixed what was the invention 
 for which the patent was granted, l^hen during the six months it 
 would have been, and before specifications were invented it must 
 have been, a question of evidence as to what was the invention 
 for which he went to the Crown,- and for which the Crown granted 
 a monopoly, and the traverse of that would be the proof. Then 
 came the statute of 1852, which introduced a further amendment. 
 It ennoted that when persons went to apply for letters patent they 
 should deposit a provisional specification. That provisional 
 specification describes the invention in terms very different indeed 
 from those in which the final specification described it. In this 
 case, instead of saying ' it shall particularly describe and ascertain 
 the nature of the invention and in what manner the same shall he 
 performed,' all that the statute says is that in the provisional 
 specification which the applicant leaves with the law officer of the 
 Crown when he applies for a patent, he shall state the nature of 
 the invpntion — no more than that ■ ai:d then, when the law officer 
 of the Crown, to whom it is referred, has looked at it, and finds it 
 does state the nature of the invention, but thinks the nature of 
 the invention as stated is large or too vague, he may require him 
 to amend it ; but if not, then he grants his certificate to use the 
 patent publicly, without at all thereby making a present of the 
 discovery to the public ; and when it came to be a question 
 whether or no what he was doing during that six months did 
 avoid the patent, I take it the process must have been to say, 
 ' look at the nature of the invention described in the provisional 
 specification, and say whether this which you have been doing, 
 and which you say was a part of the patent, is fairly within the 
 nature of the invention you have described, in that case you are 
 protected ; but if it is a new and separate invention, and a different 
 
Variance hefween Provisional and Com;plete, 417 
 
 one, then you are not protected/ I cannot but think that when 
 that is once looked at, it becomes pretty clear that when the 
 nature of an invention has been described in the provisional 
 specification in the way which has been mentioned, if something 
 were found out during the six months to make the invention work 
 better, or with respect to the mode in which the operation may be 
 performed — a thing which is very likely to happen when, in 
 carrying out his invention, the inventor finds that some particular 
 bit will not work so smoothly as he expected, and it is necessary 
 to add a little supplement to it — still the nature of his invention 
 remains the sanje, and it is no objection that in the complete 
 specification, which comes afterwards, the invention or application 
 is described more particularly and in more detail, or even if it be 
 shown that there has been more discovery made, and so as to 
 make the invention which he has described in the provisional 
 specification really workable. If nothing more is done than that, 
 I think it is good ; but as soon as it comes to be more than that, 
 and the patentee says, in the provisional specification, I describe 
 my invention as A, and in the complete specification he says I 
 hereby describe A and also B, then, as far as regards B, it is void, 
 because the letters patent were granted for the invention that was 
 described in the provisional specification, and do not cover the 
 invention that is described in the other." (^Ib. 1073.) (See 
 Horrocks v. Stuhbs, post, p. 418 (/).) 
 
 (c) United Telephone Company v. Harrison, Cox, Walker and 
 Company. [1882] 
 
 In the complete specification filed on January 30th, 1878, as 
 modified by disclaimers : Edison claimed : " (3) the method herein 
 specified of recording the undulations of the diaphragm or yielding 
 material, and the reproduction of sound by such material acting 
 upon a diaphragm to communicate to the same vibrations similar 
 to the original ones, substantially as set forth." This recording 
 instrument, which became known as the phonograph, was fully 
 described in the complete specification. The title of the pro- 
 visional specification was " controlling by sound the transmission 
 of electric currents and the reproduction of corresponding sounds 
 at a distance." After pointing out that the friction of a point or 
 surface in contact with a properly prepared and slowly moving 
 surface is very much increased or lessened by the strength of the 
 electric wave passing at the point of contact, and that from this 
 variation in the friction " a greater or less vibration is given to 
 the mechanism or means that produce or develop the sound at the 
 receiving station, thereby rendering clear and distinct the sound 
 received that otherwise would not be audible," the pro- 
 visional specification proceeded : " To carry out the peculiarities 
 of my invention under the varying conditions of use, I have 
 devised several modifications of the transmitting, receiving, 
 and intensifying devices employed in this sound telegraph; 
 portions of the apparatus are interchangeably available in trans- 
 mitting or recording, others are adapted to local use ; some are 
 
 2 e 
 
418 • PPBCIFICATION-: 
 
 only available in transmitting, and others only for receiving; and 
 some portions of my improvement can be availed of to make a 
 record of the atmospheric sound waves, or of the electric waves or 
 pulsations corresponding thereto or resulting therefrom." Held, 
 by Try, J., that although some of these words might be held to 
 refer to an instrument like the phonograph, yet that as the inven- 
 tion in the provisional specification was confined to the trans- 
 mission of sounds by electrical agency to a distance, and could 
 not honestly be intended to include the phonograph if known at 
 the time, there was a fatal variance, and the patent was bad. 
 (21 Ch. B. 720, at p. 746.) 
 
 (d) Lucas v. Millek. [1885] 
 
 ' The patentee of an invention for an improved bicycle lamp, 
 described in the provisional specification the mode of opening the 
 lamp and barrel, and afterwards thought it would be an improve- 
 ment to have a rim within the barrel. Held, by Kay, J., that this 
 was not an invention so completely apart from the invention de- 
 scribed in the provisional specification as to mate the patent bad 
 because it was a part of the claim in the complete specification. 
 {Griff. 166 ; 2 0. B. 155.) 
 
 (e) Waitlingw.. Stevens. C. A. [1886] 
 
 Esher, M.E. : " If the complete specification sets out and claims 
 an ■ invention independent of. that which is in the provisional 
 specification, besides also describing that invention which is in the 
 provisional, specificatioii, then the complete specification is bad. 
 It would be equally bad if the invention described in the complete 
 specification were a wholly different invention from that described 
 in the provisional specification, because as has been said the patent 
 then is not given for the invention which is described in the 
 provisional specification. Therefore, if there were only one inven- 
 tion described in the provisional application, and- only one in the 
 complete siiecification, but those two inventions were wholly and 
 substantially different, the patent wonld be bad. So if an inven- 
 tion is described in the provisional specification, which invention 
 is also described in the complete specification, but in the coni- 
 jilete specification another and distinct invention is described and' 
 claimed, then it is bad, because with regard to the second in- 
 vention so described and claimed in the complete specification, 
 there would be no provisional specification to cover it." (Qfiff. 
 240; 3 0. B. 147 at p. 151.) 
 
 (/) HoEROCKs V. Stubbs. [1886] 
 
 The claim in the provisional specification was for improvements 
 in machinery for doubling, twisting, and winding threads, and the 
 prime object of the whole invention ^vas the arresting of the whole 
 machine by detector mechanism. In the complete specification 
 claim 8 claimed " the arranging of the oscillating frame so that it 
 can be sustained when lifted by .a prop, which is withdrawn when 
 
Variance hetwem Provisional and Complete. 410 
 
 the lever is lifted to start the winding-." This prop was nofi 
 mentioned in the provisional specification : — Held, that as it had to 
 do with piecing the thread and not with arresting the whole, 
 machine, and was applicable to a particular isolated portion of the 
 machine, it was not a part of nor fairly developed from or fore- 
 shadowed by the provisional specification, and that, therefore, 
 there was a fatal variance. In the course of his judgment 
 Bristowe, V.-C, referred to the following words of Blackburn, L., 
 in Bailey v. Boherton {sup. p. 417) : " As soon as it comes to be 
 more than that, and the patentee says in the provisional specifi- 
 cation, I describe my invention as A, and in the complete 
 specification he says, I hereby describe A and also B, then as 
 far as regarils B it is void, because the letters patent were 
 granted for the invention that was described in the provisional, 
 specification, and do not cover the invention that is described 
 in the other ; " and proceeded, " I have always considered that 
 his Lordship must have meant by that, then having regard to B, 
 the patent is void, not as regards but having regard to B. I' 
 think that is the true view when you compare the judgment of 
 Lord Cairns with that of Lord Blackburn." (3 0. B. 221, at 
 p. 232.) 
 
 {g) MosELEY V. The Victoria Eubbee Company. [1887] 
 
 In an action for infringement of a patent for improvements in 
 producing designs on waterproof fabrics, it appeared that the 
 provisional specification spoke of vulcanisation by "the well- 
 known cold vulcanising process." At the date of the provisional 
 specification the best known cold vulcanising process was the cold 
 roller process, but the plaintiff in the complete specification 
 referred to a different process called the cold vapour process :— 
 Seld, on the facts that the cold vapour process was known and in 
 use at the earlier date; that the term "well-known cold vulcan- 
 ising process " was sufScient to include the cold vapour process ; 
 that even if the provisional specification did not mention the cold 
 vapour process the omission was not sufScient to invalidate the 
 patent, and. that if the patentee made the discovery in the. 
 interval, he was bound to mention the cold vapour process in the 
 final specification. (4 0. B. 241.) 
 
 The provisional specification also mentioned the use of colours 
 as follows : " If the design is to be produced before vulcanisation, 
 I imp7 int it in colours upon the surface of the farina-coated fabric 
 by suitable means, such for example as those employed in colour 
 printing." The complete specification stated that colours might 
 be used for printing the design, and that they should be mixed 
 with or dissolved in suitable media, which would combine with, ■ 
 temporarily soften or otherwise act upon the surface of the 
 india-rubber so as to cause the colour to adhere thereto or 
 combine therewith, and then named several suitable media : — 
 Eeld, that the omission to mention the suitable media in the 
 provisional, specification was no ground for upsetting the patent. 
 (lb. 249.) 
 ^ ^ 3 E 2 
 
420 SPECIFICATION: 
 
 (A) Woodward «. Sansum. C, A. [1887] 
 
 A patentee in his provisional specification described a mode of 
 carrying Hs invention into effect which was different from that 
 which he stated in the complete specification : — Seld, that as both 
 modes were really within the same invention, which was described 
 in general terms in the provisional specification, the patent was 
 not bad. A patentee putting in a provisional specification need 
 not describe any way in which it can be carried out, and if he 
 does describe a way, and before filing the complete specification he 
 finds out an improved way of carrying out what is described as 
 his invention in the provisional specifi.cation, then he not only 
 may but must give the public the benefit of what he has dis- 
 covered as regards the mode of carrying the invention into effect, 
 even although there may be improvement and even invention 
 which were not known to him at the time of the provisional speci- 
 fication. (4 0. B. 166.) 
 
 (h*) Hutchison v. Pattullo. [1888] 
 
 Where the provisional specification contemplated a particular 
 process for the treating of oils and fats, but the complete specifica- 
 tion did not treat the process as an essential part of the invention 
 at all, and claimed (1) the process, (2) the combined thickened 
 vegetable or animal oils or fats with mineral oils : — Held, that there 
 was a fatal variance* (5 0. B. 351.) 
 
 (i) SiDDELL V. ViCKEES. C. A. and H. L. [1888] 
 
 The remarks made by Cotton, L.J., in Woodward v. Sansum, as 
 to variance between provisional and complete specification in the 
 mode of carrying out, cited and approved. (39 Ch. D. 92.) 
 
 Where it is alleged that one of three processes, claimed in the 
 complete specification, is not covered by the provisional, the pro- 
 visional specification must be construed with reference to the 
 complete. (5 0. B. 81.) The new machinery of the comptroller and 
 examiner has not superseded the necessity of conformity between 
 the provisional and complete specifications. (7 0. B. 292.) 
 
 (i*) Ceampton v. Patents Investment CoMPAur. 0. A. [1889] 
 
 Where the variance alleged amounted to nothing more than 
 possibly some additional discovery of the same nature as that indi- 
 cated in the provisional specification : — Seld, that it was not fatal. 
 (6 0. B. 287.) 
 
 (j) King, Beown and Company v. Anglo-American Beush Corpora- 
 tion. [188'9] 
 In a patent for improvements in apparatus for generating 
 electricitj', the Court found that all that was foreshadowed in the 
 provisional specification (in so far as it related to the commutator 
 which was a most important part) was included in the second 
 claim in the complete specification, and that as the fourth claim, > 
 which also related to the commutator could not be regarded as 
 mere repetition, there was a material variance between the 
 specifications. (6 0. B. 414.) 
 
Must he Sufficient and Intelligible without Ex^perimenis. 421 
 
 (h) In re Gaulaed and Gibbs' Patent. C. A, [1889] 
 
 The complete speoification liad beea amended by striking ont an 
 erroneous statement which remained in the provisional speoifica- 
 tion : — Held, that the patentees bj' their amended speoification so 
 altered their claim that the invention was not the same as that 
 described in the provisional specification, and was greatly ex- 
 tended in scope, and that the patent was therefore bad. (TF. N. 
 1889, 60 ; 6 0. B. 215.) 
 
 (h*) Andersen and Andersen's Application. [1890] 
 
 Held, by the law officer, that there was no disconformity between 
 the applicants' specifications proved sufficiently for him to act upon. 
 :(7 0. £. 323.) 
 
 Must he Sufficient and Intelligible without Experiments. 
 
 (T) EEe. V Aekweight. Sci.fac. [1785] 
 
 BuUer, J. : " It has been truly said by the counsel, that if the 
 specification be such that mechanical men of common understand- 
 ing can comprehend it, to make a machine by it, it is sufficient ; 
 but then it must be such that the mechanics may be able to make 
 themachine by following the directions of the specification with- 
 out any new inventions or additions of their own." (1 Web. P. C. 
 66 ; Dav. P. G. 106.) " It does not prove that a specification is 
 sufficient because a man from the knowledge he has got from three 
 trials, and seeing people immediately employed about it, is able to 
 make use of it." (lb. 67.) 
 
 (m) Aekwright v. Nightingale. N. P. [1785] 
 
 Lord Loughborough : " One of the requirements (of the patent 
 law) is, that a specification shall be enrolled, stating the nature of 
 the invention ; the object of which is, that after the term is 
 expired the public shall have the benefit of the invention, but 
 without that condition is complied with, the patentee forfeits all 
 the benefit he derives from the great seal." (^Dav. P. G. 55 ; 
 1 Web. P. G. 61.) The clearness of the specification must be 
 according to the subject-matter ; it is addressed to persons in the 
 profession having skill in the subject, and if it is understood by 
 them it is inteUigible, {Bav. P. G. 37 ; 1 Web. P. G. 60.) 
 
 (n) ]5oulton v. Bull. [1795] 
 
 Action for the infringement of a patent for lessening the con- 
 sumption of steam and fuel in fire-engines. The defendants con- 
 tended (infer alia) that the patentee had not sufficiently specified 
 his invention. Eyre, C.J., in the course of his judgment, said : 
 " The substance of the invention is a discovery, that the conden- 
 sing the steam out of the cylinder, and protecting the cylinder 
 from the external air, and keeping it hot to the degree of steam 
 heat, will lessen the consumption of steam. . . . Now, the speci- 
 fication of such a discovery seems to consist in nothing more 
 than saying to the constructor of a fire-engine, ' for the future 
 condense your steam out of the body of the cylinder, instead of 
 condensing it .within it, put something round the cylinder to 
 
422 • SPECIFICATION: 
 
 protect it from the external air, and to preserve the heat within 
 it, and keep your piston air-fight without water.' Any particular 
 manner of doirjg this, one should think, would hardly need hp 
 pointed out, for it can scarcely be supposed that a workman 
 capable of constructing a fire-engine would not be capable of 
 making such additions to it as should be necessary to enable him 
 to execute that which the specification requires him to do." 
 (2'H. Bl: 497.) " Suppose a new invented chemical process, and 
 the specification should direct that some particular chemical sub- 
 stance should be poured upon gold in a state of fusion, ... it 
 would be hardlv necessary to state in the specification the manner 
 in which, or the utensils with which, the operation of putting 
 gold into a state of fusion was to be performed. These are mere 
 incidents with which every man acquainted with the subject is 
 familiar." (26. 498.) 
 
 (o) HORNBLOWER V. BOULTON, [1799] 
 
 Grose, J., said : " By a proviso in the patent, the patentee is 
 bound particularly to describe and ascertain the nature of his 
 invention, and in what manner the same was to be performed, by 
 an instrument in writing under his hand and seal, and to cause 
 the same to be enrolled in chancery. On which another question 
 arises, namely, whether the specification enrolled be sufficient. 
 The aim of the legislature is obvious; on the one hand, it was to 
 encourage ingenious artificers and able and studious men to invent 
 ' and bring forward, for the use of the public, new manufactures, 
 the produce of their own ingenuity, by holding out to them the 
 reward of fourteen years' monopoly ; on the other hand, to secure 
 to the public the benefit of the discovery, by causing to be en- 
 rolled a complete description of the thing to be done, and the 
 manner of doing it, that others might be fully informed of it ; and, 
 at the end of fourteen years, to be enabled to work or make the 
 manufacture of which the patentee was the inventor." (8 T. B. 
 100 ; Bav. P. G. 227.) If the specification be such as to enable 
 artists to adopt the invention and make the manufacture, it is 
 sufficient. (^Dav. P. C. 228.) Lord Kenyon, C.J. : " No technical 
 words are necessary to explain the subject of a patent." (J&. 224.) 
 
 (p) Cahtwright v. Eamer. ■ [1800] 
 
 Per Lord Eldon : " The patent is to be considered as a bargain 
 with the public, and the specification, therefore, is to be construed 
 on the same principle of good faith, as that which regulates all 
 other contracts. If, therefore, the disclosure be such that tbe 
 invention can be communicated to the public the statute is 
 satisfied" (cited 14 Ves. 131, 136). (1 Good P. C. 112.) 
 
 (2) Harmae v. Playne. [1809] 
 
 Ellenborough, C.J., in the courbe of the argument, said: 
 '•"When Lord Mansfield said, in the case oi Liardet v. Johnson, that 
 the meaning of the specification was, that others might be taught 
 to do the thing for which the patent was granted, it must be 
 understood to enable persons of reasonably competent skill in suoh 
 
Must he Sufficient and Intelligible without Experiments. 423 
 
 inatf ers to make it : for no sort of specification would prolsably 
 ienable a ploughman, utterly ignorant of the whole art. to make a; 
 watch." (Dav. P. G. 318.) And asain : " The object of requiring; 
 a specification to be- enrolled seems to be to enable persons of 
 reasonable intelligent skill in the subject-matter to tell from the 
 inspection of the specification itself what the invention was for 
 which the patent was granted, and how it was to be executed." 
 (76. 316.) 
 
 (r) Manton v. Manton. [1815] 
 
 Gibbs, C. J. : It is necessary that Ihe patentee "should show 
 that he has accurately explained the nature of his invention in his 
 specification, separating that which is new from that which is old, 
 so as to enable a person of tolerable skill to make the thing by 
 means of his specification." (^Dav. P. 0. 349.) 
 
 («) Hill v. Thompson. [1817] 
 
 The intelligibility of the description in the specification is a 
 matter of fact for the jury, but whether or not the patent is 
 defective in attempting to cover too much is a question of law. 
 (3 Mer. 626 ; 1 TF. P. G. 235 ; 1 Garp. P. G. 377.) 
 
 («) Newbery v. James. Ch. [181 7] 
 
 Eldon, L.C. : " In order to support a patent, the specification 
 should be so clear, as to enable all the world to use the invention 
 as soon as the term for which it had been granted was fit an end." 
 (2 Mer. 451 ; 1 Garp. P. G. 368.) 
 
 (m) E. «. Wheeler. Sci.fae. [1819] 
 
 Patent for '' a new or improved method of drying and preparing 
 malt." In the specification it was stated, that the invention con- 
 sisted in exposing malt previously made to a very hign degree of 
 heat : but it did not describe any new machine invented tor that 
 purpose ; nor the state, whether moist or dry, in which the malt 
 was originally to be taken for the purpose of being subjected to 
 the process ; nor the utmost degree of heat which might be safely 
 used; nor the length of time to be employed; nor the exact 
 criterion by which it might be known when the process was 
 accomplished. Held, that the specification was not sufficiently 
 precise. (2 B. & Aid. 346 ; 1 Carp. P. C. 394.) 
 
 Abbott, C.J., in delivering the judgment of the Court, said: 
 " It was argued that the term ' malt ' is applied to the grain as 
 soon as it has germinated by the effect of moisture, and before it 
 has been dried ; that malt in that state might be taken and used 
 for the objects of the defendant's invention ; and, as these were to 
 be accomplished by heat, his was an invention for drying malt. 
 But, if this were so, then the specification would be defective in 
 not informing the reader that the malt to be used for the intended 
 object might or ought to be taken in that state, and in leaving him 
 to discover, by experiment, whether it should be taken in that state; 
 or after drying, which, according to the most common use of the 
 
424 SPECIFICATION : 
 
 word malt, he might very reasonalily suppose." (2 B. & Aid. 353.) 
 A specification which casts upon the public the expense and labour 
 of experiment and tr^l is undoubtedly bad. (lb. 354.) 
 
 (v) Beunton v. Hawkes. [1821] 
 
 Best, J. : " The, specification must embrace two objects ; it must 
 first clearly describe the nature of the invention ; and secondly, 
 the manner in which it is to be performed." (4 B. & Aid. 556.) 
 
 (w) Stuetz v. De la Eue. Ch. [1828] 
 
 The specification must describe the invention in such a way that 
 a person of ordinary skill in the trade shall be able to carry on the 
 process. (5 Buss. 327.) 
 
 (x) Ceossley v. Beverley. N. P. [1829] 
 
 It appeared from the evidence that the specification did not give 
 any directions respecting a condenser, which was well known to 
 be an essential part of every gas apparatus. It was objected for 
 the defendant that the things comprised in the specification would 
 not make a gas apparatus, because it would be incomplete for want 
 of a condenser. Tenterden, C.J., however, held, that a workman 
 who was capable of making a gas apparatus would know that he 
 must put that in, and that although the specification did not direct 
 a condenser to be put in, yet, as it did not say that it was to be 
 left out, it was sufficient. (8 C. & P. 513; Mo. & Mai. 283,' 
 1 Web. P. a 106.) 
 
 {y) Felton v. Greaves. N. P. [1829] 
 
 A patent was granted for a machine to sharpen knives and 
 scissors, and, in the specification, this was directed to be done by 
 passing their edges backward and forward, in an angle formed by 
 the intersection of two circular files ; and in the specification it 
 was also stated, that other materials might be used according to 
 the delicacy of the edge. It was proved that, for scissors, there 
 ought to be one circular file and a smooth surface, but that two 
 Turkey stones might also succeed. Held, that the specification 
 was bad, as it neither directed the machines for scissors to be made 
 with Turkey stones, nor to be made with one circular file and a 
 smooth surface. (3 (7. c6 P. 611.) 
 
 (z) Dbeosne v. Faieie. [1835] 
 
 Patent for certain improvements in extracting sugar or syrup 
 from cane-juice and other substances containing sugar, and in 
 refining sugar and syrup. In the specification the patentee said : 
 " The invention consists in a means of discolouring syrups of every 
 description bj' means of charcoal, produced by the distillation of 
 bituminous schistus alone, or mixed with animal charcoal, and 
 even of animal charcoal alone." The specification then stated that 
 the "discoloration" was to be produced by means of a filter of 
 the charcoal, and continued : " The carbonization of bituminous 
 
Must he Sufficient cmd Intelligible without Experiments. 425 
 
 soMstus has nothing particular ; it is produced in closed vessels, as 
 is done for producing animal charcoal, only it is convenient before 
 the carbonization to separate from the bituminous schistus the 
 sulphurets of iron which are mixed with it." The specification 
 said nothing as to any previous operation on the syrup before it 
 was submitted to the filter, but it did state that syrup in a proper 
 state might be obtained by a mixture of sugar and water. The 
 defendant objected to the sufficiency of the specification. Held, 
 first, upon proof that the invention was applicable with advan-, 
 tage to the syrup, after it had undergone a certain degree of heat, 
 though it failed when applied to the first drawings of the syrup, 
 that the specification was sufficient. Secondly, that it was incum- 
 bent on the patentee to prove, that the presence of iron in the 
 bituminous schistus, used in the process of filtering, would not be 
 injurious ; or else, that the method of extracting the iron from it 
 was so simple and well known, that a person ordinarily acquainted 
 with the subject could remove it with ease ; or, that the bitu-* 
 minous schistus, as known in England, could be used in the 
 process with advantage. (5 Tyr. 393 ; 2 Cr. M. & B. 476 ; 1 (?afe,- 
 109 ; 1 Web. P. C. 158.) 
 
 (a) CoENisn V. Keene. N. P. [1835J 
 
 In the absence of evidence on the part of the defendants that 
 persons could not understand, or have been misled by the specifica- 
 tion, it is sufficient for the plaintiff to call persons who say that to 
 them it is clear. (1 Web. P. C. 602.) 
 
 (6) Morgan ». Seaward. N. P. [1836] 
 
 Alderson, B., in addressing the jury, said: "It is the duty of a 
 party who takes out a patent to specify what his invention really 
 is, and although it is the bounden duty of a jury to protect him in 
 the fair exercise of his patent right, it is of great importance to, 
 the public, and by law it is absolutely necessary, that the patentee 
 should state in his specification, not only the nature of his inven- 
 tion, but how the invention may be carried into effect. Unless he 
 be required to do that, monopolies would be given for fourteen 
 years to persons who would not on their part do what in justice 
 and in law they ought to do, state fairly to the public what_ their 
 invention is, in order that other persons may know what is the 
 prohibited ground, and in order that the public may be made 
 acquainted with the means by which the invention is to be carried 
 into effect. ... He (the patentee) has described two inventions, 
 and if either of those inventions is insufficiently specified, the 
 patent fails, for if a person runs the hazard of putting two inven- 
 tions into one patent, he cannot hold his patent, unless each can 
 be supported as a separate patent. (1 Web. P. C. 173.). . . . The 
 public, on the one hand, have a right to expect and require that 
 the specification shall be fair, honest, open and sufficient ; and on 
 the other hand, the patentee should not be tripped up by captious 
 objections which do- not go to the merits of the s[)eoification." 
 
426 SPECIFICATION : 
 
 (lb. 174.). . . . The defendant put in evidence a model mad^ 
 according to the specification which would not work on account of 
 one part being a little too small. Alderson, B., said : " A work-' 
 man of ordinary skill when told to put two things together so as 
 to move, would of course by the ordinary knowledge and skill he 
 possesses make them of sufBcient size to move. . . . That is within 
 the ordinary knowledge of every workman." (Tb. 176.) 
 
 (c) Galloway v. Bleaden. N. P. [1839] 
 
 Tindal, C.J. : The specification must contain " such a fair and 
 clear statement, that a person with a competent degree of know- 
 ledge upon the subject-matter to which the patent relates, would 
 he abl« to make that which the plaintiJBf enjoys the exclusive 
 privilege of." (1 Web. P. C. 524.) 
 
 {d) Elliott v. Aston. N, P. [1840] 
 
 Coltman, J., said : " The patentee must give such a description 
 in his specification as would enable a workman of competent skill, 
 conversant with the trade, to carry the invention into efiect." 
 (1 Web. P. a 224.) 
 
 (e) BicKFORD V. Skewes. [1841] 
 
 The specification is addressed, not to persons entirely ignorant 
 6f the subject-matter, but to artists of competent skill in that 
 branch of manufactures to which it relates. (1 Q. S. 938 : 1 Web. 
 P. G. 214 ; 10 L. J., Q. B. 302.) The sufficiency of the specifica- 
 tion is a question for the jury. (1 Q. B. 938 ; I G. & B. 736.) 
 
 {f) Neilson v. Harford. [1841] 
 
 A specification is sufficient, if without invention or addition it 
 enables a person of ordinary skill and knowledge of the subject, to 
 construct the patented machine, and such machine is to some 
 extent an improvement. 
 
 Parke, B., said to the jury : " You are not to ask yourselves the 
 question, whether persons of great skill, a first-rate engineer, or a 
 Second-class engineer, as described by Mr. Farey — whether they, 
 would do it; because generally those persons are men of great 
 Science and philosophical knowledge, and they would upon a mere 
 hint in the specification probably invent a machine which should 
 answer the purpose extremely well ; but that is not the descrip- 
 tion of persoDS to whom this specification may be supposed to be 
 addressed; it is supposed to be addressed to a practical workman, 
 who brings the ordinary degree of knowledge and the ordinary 
 degree of capacity to the subject." (1 Web. P. 0. 314.) " if ex- 
 periments are necessary in order to construct a machine to produce 
 some beneficial efiect, no doubt this specification is defective. If 
 experiments are only necessary in order to produce the greatest 
 beneficial efiect, in that case I think the patent is not void." 
 Xbinger, C.B., said : •' Where the specification uses scientific 
 
Must he Sufficient und Intelligible without Experiments. 427 
 
 terms, wHcli are not understood except by persons acquainted 
 with the • nature of the business, the specification is not bad 
 because an ordinary man does not understand it, provided a 
 pcientifio man does ; but where the specification does not make 
 use of technical terms, where it uses common language, and 
 where it states that by which a common man may be misled, 
 though a scientific man would not — when it does not profess to use* 
 scientific terms, and an ordinary man reading the specification 
 is misled by it- — it would not be good." (16. 341.) The con- 
 struction of the specification is to be given by the Court, but the 
 intelligibility of it is for the jury. (I&. 296.) 
 
 (jg) Neilson v. Thompson. [1841] 
 
 Cottenham, L.C. : " The public are entitled to know for what it 
 is that the patentee claims the invention, that they may be saved! 
 inconvenience upon the subject ; therefore, the specification must 
 tell the public for what it is that he claims protection." (1 Web. 
 P. G. 283.) 
 
 (h) Walton v. Potter. N. P. [1841J 
 
 The specification is the price paid by the inventor for the patent 
 he obtains. (1 Wd>. P. 0. 595.) . 
 
 (h,*) Gibson v. Beand. N. P. [1841] 
 
 The specification ought to be so clearly worded as to enable 
 any person of sufSoient understanding on the particular subject 
 to attain the result without doubt or dificulty, it being the price 
 paid by the inventor for keeping the public out of the enjoyment 
 of the manufacture. (1 Web. P. 0. 629.)' 
 
 (i) The Househill Company v. Neilson. N, P. [1842] 
 
 It is not necessary that the apparatus, described in the speci- 
 fication, should be productive of the greatest amount of benefit ; 
 it is sufQcient if an ordinary workman, acquainted with the 
 subject, could, by following the specification, construct an appa-^ 
 ratus productive of some benefit. Lord Justice Clerk Hope, in 
 addressing the jury, said : " The specification is to be read as 
 addressed to artists, or persons of competent skill in the branch of 
 manufacture or process to which it is applicable. Hence, known 
 piachinery need not be described, when the use of them is to be 
 made in carrying out the object of the -patent." (1 Web. P. C. 676.) 
 " Workmen of ordinary skill, means those competent in the ordinary 
 business and conducting of the particular trade — to furnish and 
 construct apparatus for the purpose required. Certainly, the 
 pursuer does not satisfy the condition of law, if he says men of the 
 greatest science — first-rate engineers — could understand him, ami 
 would know what to do, or what direction to give. That is not 
 enough. The specification must be for the benefit of the trade 
 Tjvrhen the pa,tent is out." (lb. 692.) 
 
428 SPECIFICATION : 
 
 (y) Walton v. Bateman. N. P. [1842] 
 
 It is a question for the jury whether the description of the 
 invention and of the manner of carrying it out is such as will enable 
 B, workman of competent skill in that line of business to act upon 
 it. (1 Web. P. C. 621.) 
 
 (Z;)-Macnamaea«. HuLSE. K p. [1842] 
 
 Action for the infringement of a patent for " certain improve- 
 ments in paving, pitching, or covering streets, roads, and other 
 ways." , The patentee, in his specification, said : " My invention 
 consists in an improved mode of cutting or forming stone, or other 
 suitable material, for paving or covering roads," &c. The speci- 
 fication directed the blocks, to be used for paving, to be bevelled 
 both inwards and outwards, but said nothing as to the precise 
 angle at which the bevels were to be made. The infringement 
 complained of was the manufacture of wooden blocks according to 
 the improvement of the plaintiff. Abinger, C.B., said : " If the 
 specification leaves it to experiment to determine what is the 
 proper angle, it is not good ; but if any angle is a benefit, it 
 will do." After verdict, his Lordship said : " 1 may now say that 
 my opinion was against the plaintiff as to the angle not being 
 stated, and that the specification in that respect was insufficient." 
 (1 Car. & Marsh. 477 ; 2 Web. P. G. 129.) 
 
 (Z) MuNTZ V. Foster. N. P. [1844] 
 
 Action for the infringement of a patent for " an improved 
 manufacture of metal plates for sheathing the bottoms of ships 
 or other such vessels." The patentee, in his specification, directed 
 copper and zinc to be melted together " in the usual manner, in 
 proportions between 50 per cent, of copper to 50 per cent, of zinc, 
 and 63 per cent, of copper to 37 per cent, of zinc, both of which, 
 extreme and all intermediate proportions will roll to a red heat.". 
 Meld, that if it was left so uncertain, upon the face of the speci- 
 fication, whether the quantities were to be taken with reference to 
 the measured quantities that are cast into the fusing-pot, or 
 whether they specify that which will be the result when taken out, 
 as to create in the mind of a workman any degree of doubt, it 
 would be fatal to the specification. (2 Web. P. C. 109.) 
 
 (m) Beard v. Bgerton. [1849] 
 
 A specification is sufficient if it is free from any such mistake or 
 obscurity as would mislead a person of fair intelligence. Maule, J ., 
 during the argument, said : " A specification is not to compel a 
 person, who is determined to misunderstand, to learn, but to direct 
 one who is willing to understand." (19 X. J., C. P. 36 ; 8 G. B. 
 165; 13 Jur. 1004i) The judge is to state what the specification 
 orders to be done, the jurv are to say whether it would produce 
 the result. (19 L. J., G. P. 38.) 
 
 (») Heath v. Unwin. Ex. Ch. [1852] 
 
 Alderson, B., said : " Every specification is to be read as if by 
 
Must he Sufficient and Intelligible without Experiments. 429 
 
 persons acquainted witli the general facts of the mechanical or 
 chemical sciences involved in such invention. Thus, if a parti- 
 cular mechanical process is specified, and there are for some parts 
 of it as specified other well-known mechanical equivalents, the 
 specification of those parts is in truth a specification of the well- 
 known equivalent also to those to whose general knowledge we 
 refer, namely, mechanics, and readers of specifications ; and so it 
 is with chemical equivalents also in a specification which is to be 
 read by chemists. But it may be that there are equivalents, 
 mechanical and chemical, existing, but previously unknown to 
 ordinary skilful mechanics and chemists. These are not included 
 in the specification, but must be expressly stated there." (2 Web. 
 P. a 246.) ^ ^ 
 
 (o) Wallington v. Dale. [1852] 
 
 The sufficiency of the description of an invention, contained in a 
 specification, is a question for the jury. (7 Ex. 888.) 
 
 (p) Holmes v. London & North Western Eailway Company. 
 [1852] 
 
 Jervis, C.J., said : " The object of the condition in the patent 
 requiring a specification is twofold ; first, that useful novelties 
 should be given to the public, of which, at the end of the term 
 granted to the patentee, they should have the full benefit; and, 
 secondly, that no person should inadvertently infringe the rights 
 of the patentee during the term for which the patent has been 
 granted." (Macr. P. 0. 16.) 
 
 (g) Crosslet v. Potter. N. P. [1853] 
 
 Pollock, C.B., said : " This patent is taken out for the making 
 of coach lace, carpets, velvets, and velveteens of all sorts, and it 
 must be compietent to do all and every part of that work, by the 
 means stated in the specification, otherwise the patent is not 
 good .... a patent, the object of which is, not to benefit the 
 world by its communication, but to obstruct, by the very general 
 character of the claims made for conferring peculiar privileges 
 on the patentee ; such a patent as that, in my judgment, cannot 
 be supported." (Macr. P. G. 245.) 
 
 (r) Hills v. London Gas Light Company. [1860] 
 . Pollock, C.B. : " The condition that a patentee shall specify is 
 introduced into letters patent in order to prevent patents being 
 granted for known thiags, and to secure the public the benefit of 
 new inventions." (5 E. & N. 340.) 
 
 (s) MOETON V. MiDDLETON. [1863] 
 
 Lord President : " In judging of the sufficiency of a specifica- 
 tion, it is necessary to see whether the patentee sets forth clearly 
 the nature of his invention, and sets it forth so as to serve the 
 double purpose-^first, of showing a workman of ordinary know- 
 ledge and skiU how he can construct the thing specified in the 
 
430 SPECIFICATION: 
 
 •patent ; and second, of ehctwing persons who read the patent what 
 they must avoid doing if they would not infringe the patent." 
 The sufSoiency of the specification, as serving this double purpose, 
 is a matter for the jury. (1 Cr. S. 3rd series, 721.) 
 
 (s) FOXWELL V. BOSTOCK. [1864] 
 
 The law requires that a specification should be intelligible to 
 a workman of ordinary skill and information on the subject. (10 
 i. T. Bep., N. S. 147.) 
 
 '(«) Simpson v. Hollidat. Ch. [1866] 
 
 . Lord Westbury : " When it is stated that an error in a specifica- 
 tion which any workman of ordinary skill and experience would 
 perceive and correct, will not vitiate a patent, it must be under- 
 stood of errors which appear on the face of the specification, or the 
 drawings it refers to ; or which would be at once discovered and 
 corrected in following out the instructions given for any process 
 or manufacture ; and the reason is because such errors cannot 
 possibly mislead. But the proposition is not a correct statement 
 of the law, if applied to errors which are discoverable only by 
 experiment and further inquiry ; neither is the proposition true of 
 an erroneous statement in a specification amounting to a false 
 suggestion, even though the error would be at once observed by a; 
 workman possessed of ordinary knowledge of the subject." (13 
 W. B. 578 ; 12 L. T. Bep., N. S. 99.) 
 
 («) Thomas v. Welch. [1866] 
 
 It is necessary that the specification should state the object of 
 the invention, and the means by which the patentee proposes to' 
 effect it. (i. B., 1 C. P. 201.) 
 
 (w) Betts v. Neilson. Ch. [1868] 
 
 Whether a specification contains a sufficient description can 
 only be ascertained by experiment ; and in making the experiment,, 
 knowledge and means may be employed which have been acquired 
 since the date of the patent, (i. B., 3 Ch. 429.) 
 
 (w) Paekes v. Stevens. [1869] 
 
 The sufficiency of -a specification is not a question of law, 
 but a quebtion of fact in each particular case. (L. B., 8 EqJ 
 358 ; 38 L. J., Ch. 627 ; affirmed, L. B., 5 Ch. 36 ; 22 L. T. Bep., 
 N.S.635.) 
 
 (a;) Plimpton v. Malcolmson. M. E, [1876] 
 
 Jessel, M.E., said : — " It is plain that the specification of a patent 
 is not addressed to people who are ignorant of the subject-matter. It 
 is addressed to people who know something about it. But then there 
 are various kinds of people who know something about it. If it is 
 a mechanical invention, as this is, you have, first of all, scientific 
 mechanicians of the first' class, eminent engineers ; then you have 
 scientific mechanicians of the second class, managers of great manu- 
 
Must le Sufficient and Intelligible without Experiments. 431 
 
 factories, great employers of latour, persons wIig have studied, 
 mecliaiiics — not to the same extent as the first class, the scientific 
 engineers, hut still to a great extent— ^for the purpose of cqnducting 
 manufactories of complicated and unusual machines, and who 
 therefore must have made the suhject a matter of considerable 
 gtudy ; and in this class I should include foremen, being men of 
 superior intelligence, who, lite their masters, would be capable of 
 invention, and, like the scientific engineers, would be able to find 
 out what was meant even from slight hints, and still more from 
 imperfect descriptions, and would be able to supplement, so as to 
 succeed, even from a defective description, and, even more than 
 that, would be able to correct an erroneous description. That is 
 what I would say of the two first classes, which I will call the 
 scientific classes. The other class consists of the ordinary work- 
 man, using that amount of skill and intelligence which is fairly to 
 be expected from him — ^not a careless man, but a careful man, 
 though not possessing that great scientific knowledge or power of 
 invention which would enable him by himself, unaided, to 
 supplement a defective description or correct an erroneous descrip- 
 tion. Now, as I understand, to be a good specification, it must be 
 intelligible to the third class I have mentioned, and that is the 
 result of the law." (L. B., 3 Ch. D. 668.) 
 
 (jj) HiNKS V. Safety Lighting Company. M. E. [1876] 
 
 Where a description in the specification of a lamp-burner 
 omitted to state where the hole for the admission of air was to be 
 made, it was held that the specification was bad. {L. M., 4l Ch. 
 D. 607.) 
 
 Jessel, M.E. : "Then comes the question, how far I am at 
 liberty to correct the specification. The specification does not tell 
 me where the opening is to let in the air. All it says is, ' A 
 circular hole is made in the cone or deflector, through which the 
 circular flame passes.' It is said that, though there is no opening 
 in the drawing, yet a workman could correct the drawing by. 
 putting in the opening, and he could correct it because he is told 
 there is a cone or deflector, and the cone or deflector of the lamp 
 means something or other which will deflect air, and therefore 
 there must be sufScient air to be deflected and support the light, 
 and make it bum well. But, uu fortunately for that argument, a 
 lamp may bum badly although it is patented, and the patentee, 
 said it would bum badly, even though the holes were ex.cee.dingly 
 small, or as I understood, if there were no holes at all it would 
 burn, but it would be an imperfect combustion. . . . Now, this 
 being so, I am not prepared to say that, when you put your 
 specification into the hands of a skilled worknian, he is to 
 exercise invention to make a lamp useful, that he is to correct it 
 without being told anything to correct it by." (lb. 616.) 
 
 (z) Bailey v. Eobebton. H. L. [1878] 
 
 The complete specification of a patent for "improvements in 
 preserving animal substances," said: "The manner in which 
 
432 SPECIFICATION: 
 
 our said inTention is performed is as follows : — We employ a 
 solution, hereinafter distinguished as solution No. 1, being a 
 solution of bisulphite of lime (usually expressed by the formula 
 CaO,2S02), in water of the specific gravity 1050." The specifica^ 
 tion then described the formation of solutions Nos. 2, 3 and 4, by 
 mixing solution No. 1 with other bodies, and the mode of employ- 
 ing them in preserving various animal substances, but contained 
 no statement as to how the solution No. 1 was to be applied or 
 used for the purposes of the invention. The patentee claimed the 
 use of solution No. 1 for preserving animal substances, and the 
 preservation of particular animal substances by the various other 
 solutions " in manner hereinbefore described." Weld, that, if the 
 final specification claimed the independent and separate use of 
 solution No. 1, for preserving animal substances, there was no 
 suf&cient description of the manner in which the invention was to 
 be performed. (L. S., 3 App. Gas. 1055.) Lord Cairns, L.O., 
 said : " If it is the case that solution No. 1 is set up merely as a 
 basis to be afterwards admixed with No. 2, No. 3 and No. 4, then, 
 inasmuch as your lordships find an accurate and complete descrip- 
 tion of the manner in which the solutions of No. 2, No. 3 and 
 No. 4 are to be used and applied, certainly the complete specifica- 
 tion is open to no charge of being defective as not showing how 
 the invention is meant to be performed. But, on the other hand,, 
 if the solution No. 1 is not only set up as a basis to be afterwards 
 admixed with No. 2, No. 3 and No. 4, but to be used by itself pure 
 and simple, then, my lords, I am bound to say that I must concede 
 the cogency of the observations of the learned judges in the 
 court below, that there is absolutely no statement of any 
 kind how the solution No. 1 is to be applied and used." (76. 
 1065.) 
 
 (o) Wegmann v. Corcoran. Try, J. [1879] 
 
 Although the grantee of a patent for an invention communi- 
 cated to him by a foreigner resident abroad, is only bound to tell 
 the public all that he himself knows, yet, if the original inventor 
 has not told him enough to enable him so to describe the invention 
 as that it can be constructed by the aid only of the specification, 
 the patent wiU be invalid, (i. B., 13. Ch. D. 66.) 
 
 (6) British Dynamite Company and Others v. Krebs and Others. 
 H. L. [1879] 
 
 In an action for infringement of a patent for improvements in 
 explosive compounds, and in the means of igniting the same, the 
 defendants denied the novelty of the invention and the sufficiency 
 of the specification. The specification stated: "This invention 
 relates to the use of nitTO-glycerine in an altered condition, which 
 renders it far more practical and safe for use. The altered 
 condition is effected by causing the nitro-glycerine to be absorbed 
 in porous unexplosive substances, such as charcoal, silica-paper 
 or similar materials, whereby it is converted into a powder which 
 I call dynamite or Nobel's explosive powder. By this absorption 
 
Must he Sufficient and Intelligible without Experiments. 433 
 
 of tlie nitro-glycerine in some porous substances it becomes in a 
 high degree insenbible.to shocks, and can also be burned over fire 
 without exploding. The safety powder is exploded : (1) when 
 under confinement by means of a spark or any mode of ignition 
 used for firing ordinary gunpowder ; (2) without or during con- 
 finement by means of a special fulminating cap containing a 
 strong charge of fulminate which is adapted to the end of a fuse, 
 and is strongly squeezed to the latter for the purpose of more 
 effecti:}ally confining the charge so as thereby to heighten the 
 effect of the detonation. (3) By means of an additional charge 
 of ordinary gunpowder the explosion of the latter will cause the 
 dynamite to go off even when it is only partially confined. I 
 claim as the invention the mode herein set forth of manufacturing 
 the safety powder or dynamite herein described, and also the 
 modes of firing the same by special ignition as herein set forth." 
 
 Dynamite was in fact made by pouring nitro-glycerine over a 
 kind of silicious earth called keiselguhr, which was first calcined 
 and reduced to powder. 
 
 Orlando Webb, manager of some slate quarries, deposed fur the 
 plaintiffs that he and his workmen had tried to make dynamite 
 in 1867 by absorbing nitro-glycerine with powdered slate, using 
 the cuttings from the machines, and that finding this not suffi- 
 ciently absorbent, he mixed the slate powder with brick-dust,, 
 when considerably more liquid was taken up. 
 , The Court of Appeal (Jessel, M.E., James and Thesiger, L.JJ.), 
 reversing Fry, J., gave . judgment for the defendants on the 
 ground that the specification did not give directions by which an 
 ordinary workman could without experiment produce a practical 
 useful commercial article ; inasmuch as there was nothing to 
 indicate that the material was to be pulverized. And further 
 on the ground that the patentee made a distinct claim to a mode 
 of igniting by means of a special fulminating cap which was 
 not a novelty at the time the patent was taken out. 
 
 On appeal, the House of Lords restored the order of Fry, J. 
 
 Cairns, L.C. : " The construction of the specification is for the 
 Court to be determined like the construction of any other written 
 instrument, the Court placing itself in the position of some person 
 acquainted with the surrounding circumstances as to the state 
 of art and manufacture at the time, and making itself acquainted 
 with the technical meaning in art or manufacture which any 
 particular word or words may have. When the nature of the 
 invention is thus ascertained by the Court as a matter of con- 
 struction, the Court has then to inquire whether the manner in 
 which the same is to be performed is sufiiciently described in the 
 specification to the comprehension of any workman of ordinary 
 skill in the particular art or manufacture ; and this the Court can 
 best do'by the evidence of workmen of that description, and by 
 evidence of what workmen of that description have actually don© 
 under the patent. 
 
 " Now I cannot doubt that looking to the description of the 
 invention, as separate from the description of the way in which 
 
 Ji F 
 
43 1 SPECIFICATION: 
 
 it is to be performed, we liave the nature of the invention 
 sufficiently and intelligibly described. . . . But then it is said 
 there is no sufficient description of the manner in -which the 
 invention is to be performed. . . . The matter is one which must 
 be determined by evidence. Orlando Webb (admittedly a skilled 
 witness) states that, in 1867, his attention was drawn to this 
 specification and that he made dynamite under it. Neither he 
 nor his workmen had any difficulty in making it. . . . No work- 
 man whatever, skilled or unskilled, has been produced by the 
 respondents who states that he has been or would be misled by 
 the specification or unable to make dynamite by following its 
 directions. I come to the conclusion that there is no insufficiency 
 in the specification. 
 
 " The second question is as to the extent of the claim. ... I 
 look upon the means of explosion, even assuming them to be 
 known as applicable to other substances, to be part and parcel 
 of the invention which the patentee was bound to give to the 
 public as a complete invention, and I understand him to claim 
 these means of explosion only as part and parcel of this invention. 
 He does not, as it seems to me, claim the means of explosion in 
 gross, but only as appendant to dynamite, and he would not be 
 allowed under this patent to claim them for any other purpose. 
 . . . The second claim being as it seems to me merely a claim to 
 the user of that which is included in the first, I cannot think 
 that the patent should be avoided by the introduction of that 
 which is merely useless." (1 Good. P. 0. 88, at p. 91.) 
 
 (6 *) Philpott v. Hanbuey. [1885] 
 
 A patentee is required to particularly describe and ascertain the 
 nature of his invention, and the means of performing the same. 
 Those are two quite different things. The object of requiring the 
 nature of the invention to be stated in the specification is that 
 persons reading it may know with reasonable clearness and facility 
 what they are prohibited from using. The object of requiring the 
 patentee to particularly ascertain the means of performing the 
 same is to prevent him from extending his monopoly by keeping 
 secret the mode in which he did it. (2 0. B. 38.) 
 
 (c) Edison v. Woodhouse. (No 2.) C. A. [1887] 
 
 The defendants did not show that the directions in the speci- 
 fication were not practically sufficient to enable a competent 
 person to make the patented articles ; but relied on the words 
 used in the specification, and evidence that the temperature would 
 have to be kept up, which the Court found was implied in the 
 specification : — Held, that this was not sufficient to invalidate 
 the patent, for if the language of a specification is clear enough 
 to guide a competent workman, the Court cannot hold the 
 language insufficient in point of law. No doubt it is for the 
 Court and not for a workman to construe the specification ; but 
 if a workman says it is a sufficient guide to him, and the Court 
 
Must he Sufficient and Intelligible unthout Ex^perimenfs. 435 
 
 believes him, the Court nmst hold that as regards clearness of 
 description the specification is in point of law sufficient. (Griff. 
 95 ; 3 0. B. 183 ; i 0. B. 99.) 
 
 (c*) Beat v. Gardiner. [1887] 
 
 If the patentee's claim to the new thing is so expressed that an 
 intelligent reader must, after fair perusal and reasonable reflection, 
 conclude what the production is of which the patentee has a 
 monopoly, then the nature of the invention (as distinguished from 
 the means of performing it) is sufficiently described. (4 0. B. 
 400.) 
 
 (d) MosELEY V. The Victoria Ectbber Company. [1887] 
 
 In an action for infringement of a patent for improvements in 
 the production of designs upon waterproof fabrics : — Held, as a 
 matter of construction of the specification taken in connection 
 with the evidence that the cold vapour process referred to was 
 sufficiently described. (4 0. B. 241.) 
 
 (e) Badische Anilin und Soda Fabrik v. Levinstein. H. L. 
 
 [1887] 
 
 Two isomeric forms of naphthylamine were known to exist at 
 the date of the plaintiffs patent, but one only, alpha naphthy- 
 lamine, was known in commerce, the other being only mentioned in 
 scientific books. Beta naphthylamine had only been known for 
 a few years, before which time, and to some extent afterwards, 
 alpha naphthylamine had been known as naphthylamine. The 
 plaintiff's specification, which was, from its nature, addressed to 
 advanced students of organic chemistry, mentioned naphthylamine 
 as an important factor in his process, without stating which. 
 Beta naphthylamine would not produce the desired result : — Held, 
 reversing the decision of the Court of Appeal, that the specification 
 was sufficient, and not open to the charge of ambiguity. (12 
 App. a 710 ;4:0.B. 449.) 
 
 (/) Edison -AND Swan Electric Light Company v. Holland and 
 Others. C. A. [1889] 
 In considering the sufficiency of a specification for an incan- 
 descent light dated in 1879, it must be remembered that there was 
 no trade then of manufacturing incandescent lamps, and therefore, 
 the specification should be so explicit as to enable an intelligent 
 working man to make an incandescent lamp without having to 
 try experiments. (T. L. Bep. IV. 386) -.—Meld, by Kay, J., that 
 the directions contained were not sufficient to enable the processes 
 described to be followed out without careful experiments and 
 numerous failures, and that therefore the specification was in- 
 sufficient. (5 0. B. 459). But held by the Court of Appeal that 
 the specification was sufficient. Lindley, L.J. : " Two conditions 
 imposed by the old Patents Act, 15 & 16 Vict. c. 83, sect. 9, in 
 order to sustain a patent are distinct, and compliance with one is 
 not necessarily compliance with the other. The first condition is 
 
 2 F 2 
 
436 SPECIFICATION : 
 
 that the patentee must stale in clear and intelligible language 
 what the invention really is, so that others may know what 
 addition the patentee has made to what was tnown before, and 
 what they are not at liberty to do without his consent. The 
 seofmd condiiion is that he must state in clear and intelligible 
 language how the patented invention is to be performed, so that 
 others may learn from it how practically to avail themselves of it." 
 (6 0. E. 243.) 
 
 Must he Candid, and not Misleading or Amhiguous. 
 
 (gr) LiARDET V. Johnson. N. P. [1778] 
 
 " The meaning of the specification is, that others may be taught 
 to do the thing for which tlie patent is granted, and if the speci- 
 fication is false the patent is void, for the meaning of the specifi- 
 cation is, that after the term the public shall have the benefit of 
 the discovery." 
 
 In a patent for trusses for ruptures, the patentee omiited what 
 was very material for tempering steel, which was rubbing it with 
 t illovv, and for want of that Lord Mansfield held it void. (1 WeH. 
 P. a 53 ; Bull. N. P. 76.) 
 
 (¥) Eeg. «. Arkweight. Sci.fac. [1786] 
 
 Buller, J., in addressing the jury, said : " It is clearly settled 
 at law that a man, to entitle himself to the benefit of a patent for 
 a monopoly, must disclose his secret, and specify his invention in 
 such a way that others may be taiight by it to do the thing for 
 which the patent is granted; for the end and meaning of the 
 specific ition is, to teach the public, after the term for which the 
 patent is granted, what the art is, and it must put the public in 
 possession of the secret, in as ample and beneficial a way as the 
 patentee himself uses it. This I take to be clear law, as far as it 
 respects the specification ; for the patent is the reward, which, 
 under the Act of Parliament, is held out for a discovery, and 
 therefore, unless the discovery be true and fair, the patent is void. 
 If the specification, in any part of it, be materially false or defec- 
 tive, the patent is against law, and cannot be supported." (1 Web. 
 P. G. 66 ; Bav. P. G. 106.) According to the evidence, certain 
 parts of the machine described were useless. Bailer, J., said : " If 
 those are of no use but to be thrown in merely to puzzle, I have 
 no difficulty to say, upon that ground alone the patent is void." 
 (JDav. P. G. 118.) "If four things only were necessary instead 
 ol: ten, the specification does not contain a good account of the 
 invention." (lb. 125.) 
 
 (i) Turner «. Winter. [1787] 
 
 Action for the infringement of a patent for "a method of pro- 
 ducing a yellow colour for painting in oil or water, making white- 
 lead, and separating the mineral alkali from common salt, all to 
 be performed in one single process." Three objections were taken 
 to the specification. " First, that, after directing that lead should 
 
Must he Candid, and not Misleading or Ambiguous. 437 
 
 be calcined, it directed another ingredient to be t^ken, which 
 would not answer the purpose, viz. minium. Neither was it said 
 that minium should be calcined or fused ; but if it had any refer- 
 ence to the preceding words, then it, should be calcined, which 
 would not produce the effect, fusion being necessary. Second, 
 that 'fossil salt' was improperly mentioned. There were many 
 kinds of fossil salt, only one of which, viz. sal gem, would answer 
 the purpose, because it must be a marine salt. Tbiid, that the 
 white substance produced was not that cumnionly known as white- 
 lead:" — Seld, that, if any of these objections were well founded, it 
 would avoid the patent. (1 T. U. 602 ; Dav. P. G. 145; 1 Web. 
 P. G. 77.) BuUer, J., said : " If the patentee says that by one 
 process he can produce three things, and he fails in any one, the 
 consideration of his merit, and for which the patent was granted, 
 fails, and the Crown has been deceived in the grant. Slight 
 defects in the specification will be sufficient to vacate the patent." 
 (1 Web. P. G. 82.) " If he (the patentee) make the article for 
 which the patent is granted, with cheaper materials than those 
 enumerated, although the latter will- answer the purpose equally 
 well, the patent is void, because he does not put the public in 
 possession of his invention, or enable them to derive the same 
 benefit which he himself does. (lb. 81.) 
 
 (j) HuDDAET V. Grimshaw. N. P. [1803] 
 
 The insertion or representation of anything as material, not 
 being so in fact, will vitiate the specification. (Dav. P. G. 295 ; 
 1 Web. P. G. 93.) 
 
 (¥) Wood v. Zmimer. N. P. [1815] 
 
 In this action, to try the validity of Zinck's patent for " a method 
 of making verdigris," it appeared that the method described in 
 the specification was sufficient to make the verdigris, but that 
 Zinck had been accustomed clandestinely to put aquafortis into the 
 boiler, whereby one of the ingredients, copper, was dissolved more 
 rapidly ; but the verdigris so produced was neither better nor 
 cheaper than that made according to the specification, which did 
 not mention aquafortis in any way whatever. Gibbs, O.J. : "It is 
 said that the method described makes verdigris, and that the speci- 
 fication is, therefore, sufficient. The law is not so ; a man who 
 applies for a patent, and possesses a mode of carrying on that 
 invention in the most beneficial manner, must disclose the means 
 of producing it in equal perfection, and with as little expense and 
 labour as it costs the inventor himself. The price that he pays 
 for his patent is, that he will enable the public, at the expiration 
 of his privilege, to make it in the same way, and with the same 
 advantages. If anything that gives an advantageous operation to 
 the thing invented be concealed, the specification is void. Now, 
 though the specification should enable a person to make verdigris 
 substantially as good without aquafortis as with it, still, inasmuch 
 as it would be made with more labour by the omission of aquafortis, 
 it is a prejudicial concealment, and a breach of tlie term, which 
 
438 SPECIFICATION : 
 
 the patentee makes with the pulDlic." (Holt, N. P. 58; 1 Web. 
 P. G. 82.) 
 
 (Z) BoviLL V. Moore. N. P. [1816] 
 
 Gibbs, 0. J., in addressing the jury, said : " There is another 
 consideration respecting the specifioation, which is also a material 
 one, and that is, whether the patentee has given a full specification 
 of his invention, not only one that will enable a workman to 
 constrnct a machine answering to the patent, but one that will 
 enable a workman to construct a machine answerable to the patent 
 to the extent most beneficial within the knowledge of the patentee 
 at the time ; for a patentee, who has invented a machine useful to 
 the public, and can construct it in one way more extensive in its 
 benefit than in another, and states in his specification only that 
 mode which would be least beneficial, reserving to himself the 
 more beneficial mode of practising it, although he will have so far 
 answered the patent as to describe in his specification a machine 
 to which the patent extends ; yet he will not have satisfied the 
 law by communicating to the public the most beneficial mode he 
 was then possessed of, for exercising the privilege granted to him. 
 
 If at the time when he obtained his patent he was 
 
 apprised of this more beneficial mode of working, and did not, 
 by his specification, comniunicate this more beneficial mode of 
 working to the public, that will have been a fraudulent conceal- 
 ment from the public, and will render his patent void." (Bav. 
 
 P. a 400.) 
 
 (m) Savory v. Peice. N. P. [1823] 
 
 Action for the infringement of a patent for a method of making 
 seidlitz powder. The specification gave three recipes for preparing 
 the ingredients, which were Eochelle salt, carbonate of soda, and 
 tartaric acid. It was proved that by following the directions 
 given in the specification, the result was obtained, and that it was 
 new and useful. It appeared also that the three recipes were 
 only common processes for preparing the ingredients, which were 
 sold in shops before the date of the patent. The specification did 
 not give any name to the ingredients resulting from the three 
 recipes : — Seld, that the patent was void. (1 Sy. & Mo. 1 ; 1 Web. 
 P. G. 83.) Abbot, C.J., in delivering judgment, said : " It is the 
 duty of any one, to whom a patent is granted, to point out in his 
 specification the plainest and most easy way of producing that for 
 which he claims a monopoly, and to make the public acquainted 
 with the mode which he himself adopts. If a person, on reading 
 the specification, would be led to suppose a laborious process 
 necessary to the production of any one of the ingredients, when, 
 in fact he might go to a chemist's shop and buy the same thing as 
 a separate simple part of the compound, the public are misled. 
 If the results of the recipes, or of any of them, may be bought in 
 shops, this specification, tending to make people believe an elabo- 
 rate process essential to the intervention, cannot be supported." 
 (1 By. & Mo. 3.) 
 
Must he Candid, and not Misleading or Ambiguous. 439 
 
 (m) Stuetz v. De la. EtJE. Ch. [1828] 
 
 The patent was " for certain improvements in copper and other 
 plate printing." The specification declared that " the nature of 
 the invention consisted in putting a glazed or enamelled surface 
 on paper to be used for copper and other plate printing, by means 
 of white-lead and size." This glaze or enamel was directed to be 
 made by mixing size, in certain proportions, with " the finest and 
 purest chemical white-lead," but the evidence went to show that 
 there was no substance generally known in the trade by that 
 denomination. Lyndhurst, L.O., said : " It is a principle of patent 
 law, that there must be the utmost good faith in the specification. 
 It must describe the invention in such a way, that a person of 
 ordinary skill in the trade shall be able to carry on the process. 
 Here, the specification says, that there is to be added to the size 
 certain proportions ' of the finest and purest chemical white-lead.' 
 A workman would naturally go to a chemist's shop, and ask for 
 ' the finest and purest chemical white-lead ;' the answer which he 
 would receive would be, that there was no substance known in the 
 trade by that name. He would be compelled to ask for the purest 
 and finest white-lead ; and, according to the evidence, the purest 
 and finest white-lead that can be procured in London will not 
 answer the purpose. It is said that there is a substance prepared 
 on the Continent, which is white-lead, or some preparation of 
 white-lead ; and that, by using it in the manner described in the 
 specification, the desired effect is produced. If that be so, the 
 patentee ought to have directed the attention of the public to that 
 circumstance." (5 Buss. 327 ; 1 Weh. P. G. 83.) 
 
 (o) Ceompton v. Ibbotson. [1828] 
 
 The patent was for an improvement in drying and finishing 
 paper. The patentee said in his specification : " Tiie invention I 
 claim consists in conducting the paper, by means of cloth or cloths, 
 against the heated cylinders, which cloth may be made of any 
 suitable material, but I prefer it to be made of linen warp and 
 woollen weft." The evidence showed, that, before the date of the 
 specification, the patentee had tried several fabrics for the purpose, 
 but none had answered except the one made of linen and wool : — 
 Meld, that the specification was bad, as it tended to mislead the 
 public. Tenterden, CJ. : " Other persons, misled by the terms of 
 this specification, may be induced to make experiments which the 
 patentee knows must fail, and the public, therefore, has not the 
 full and entire benefit of the invention." (Dan. d; L. 34:; 1 Web. 
 P. a S3; 1 Carp. P. C. 462.) 
 
 (p) Lewis v. Marling. [1829] 
 
 A party took out a patent for an improved shearing machine, to 
 shear woollen cloths, and claimed four things as his invention. 
 One of them was a proper substance to brush the cloth. In 
 describing the machine in the specification, he directed plush to 
 be used for this purpose, but he nowhere stated that this was an 
 essehtial part of his machine. Before the time of the patentee's 
 
440 SPECIFICATION : 
 
 invention some kind ofbrusli had been tiniformly used, but it was 
 subsequently ascertained tbat with this , machine no brush was 
 necessary: — Held, that this did not invalidate the patent. (10 B. 
 &G.22; 4 C. * P. 56 ; 5 ilf. <6 E. 66 ; 1 Web. P. C. 493.) Tenter- 
 den, O.J., said : " If the patentee mentions that as an essential 
 ingredient in the patent article, which is not so, nor even useful, 
 and thereby he misleads the public, his patent may be void ; but 
 it -would be very hard to say that tiiis patent should be void 
 because the plaintiffs claim to be the inventors of a certain part of 
 the machine not described as essential, and which turns out not to 
 be useful." (1 Web. P. C. 495.) Bayley, J., said : " If the party 
 knevsr that it (the brush) was unnecessary, the patent would be 
 bad, on the ground that this was a deception, but if he thought it 
 was proper, and only by a subsequent discovery finds out that it 
 is not necessary, I think that it forms no ground of objection. . . . 
 If the patentee suppresses anything, or if he misleads, or if he 
 does not communicate all he knows, his specification is bad. So, 
 if he says there are many modes of doing, a thing, when in fact 
 one only will do, this will also void the patent ; but if he makes a 
 full and fair communication, as far as his knowledge at the time 
 extends, he has done all that is required." (lb. 496.) 
 
 (2) Ceossley v. Beverley. [1829] ' ., 
 
 Bayley, J. : " It is the duty of the inventor, if between the 
 period of taking out the patent and enrolling the specification he 
 makes discoveries which will enable it better to effectuate the 
 thing for which the patent was obtained, not. only that he is at 
 liberty to introduce them into his patent, but that it is his bounden 
 duty !^o to do, and that it is not sufficient for' him to communicate 
 to the public the knowledge which he had at the time he obtained 
 the patent, but he ought to communicate to the public the know- 
 ledge he has obtaiued before the specification." (1 Web. P. G, 
 117.) 
 
 (r) Jones v. Heaton. ' ' 
 
 Tindal, C.J. : " The patentee is bound to give in his specifica- 
 tion the most improved state of his invention up to the time of 
 enrolling his specification." (1 Web. P. C. 404, («.)) 
 
 (s) Derosne v. Faieie. [1835] 
 
 A specification must state at least one method which will 
 succeed. (2 C, M. & B. 493 ; 1 Web. P. 0. 165.) 
 
 (<) MoEGAN ?;. Seaward. N. P. [1836] ' '' 
 
 Alderson, B. : " If a patentee is acquainted with any particular 
 mode by which his invention may be more conveniently carried 
 into effect, he ought to state it in his specification." (1 Web. P. G. 
 174.) 
 
 (m) Galloway v. Bleaden. N. P. [1839] 
 
 Tindal, C.J., referring to the specification, said ; " If there is a 
 
Must he Candid, and not Misleading or Ambiguous. 441 
 
 want of clearness, so that the public cannot afterwards avail them^ 
 selves of it, much more if there is any studied ambiguity in it, so 
 as to conceal from the public that which the patentee for a term is 
 enjoying the exclusive benefit of, no doubt the patent itself 
 would be completely void." (1 Web. P. C. 524.) 
 
 (») BiCKPORD V. Skewes. [1841] 
 
 Patent for a miner's safety fuse. The specification directed the 
 use of " gunpowder, or other proper combustible matter," fur the 
 manufacture of the fuse. It was objected, on behalf of the defen- 
 dants, that the plaintiff had failed to show that any other material 
 but gunpowder had ever been used in the fuse ; or, if introduced, 
 would answer the purpose desired. Denman, C.J., in delivering 
 the judgment of the Court, said : " The first part of this objection 
 is true in fact ; but it seems to us immaterial ; for if other materials, 
 not specified (and it is certainly not necessary to specify all), but 
 still within the description given, will answer the purpose, no 
 ambiguity is occasioned, nothing that can mislead the public, or 
 increase the difficulty hereafter of making the instrument, by the 
 introduction of terms which import that the patentee has himself 
 used them. The latter part of the objection, if true in fact, would 
 have been more material, because it does tend to mislead if it be 
 stated that a whole class of subsiances may be used to produce a 
 ■given effect, when, in fact, only one is capable of being used suc- 
 cessfully." (1 Q. B. 948; 1 Web. P. G. 218.) 
 
 (w) Walton v. Potter. N. P. [1841] 
 
 Tindal, O.J., in addressing the jury, said: "The object of the 
 specification is, that it is the price which the party who obtains 
 the patent pays for it, and it would be a hard bargain on the part 
 of the public, if he were allowed to clothe his discovery and his 
 description in characters so dark and so ambiguous, that no one 
 could make from it when the fourteen years have expired, and he 
 should not have paid the price for which he enjoyed the exclusive 
 privilege, but that he should have it in his own hands still for as 
 long a period as he chooses ; and therefore, it is always a proper 
 answer when a patent is set up, to say that you have not so 
 described it, that it may be understood." (1 Web. P. C. 595.) 
 
 (x) Neilson «!. Harford. [1841] 
 
 A specification, which contains a false statement in a material 
 circumstance, of a nature that, if literally acted upon by a compe- 
 tent workman, would mislead him, and cause the experiment to 
 fail, is bad, and the patent invalidated, although the jury finds 
 that a competent workman, acquainted with the subject, would not 
 be misled by the error, but would correct it in practice. The 
 patentee, in his specification, said : " The shape of the receptacle " 
 (a part of his machine) " is immaterial to the efi^eot." This was 
 held to cast upon the patentee the necessity of proving to the 
 satisfaction of the jury that any shape which could reasonably be 
 
4-42 SPECIFICATION : 
 
 expected to be made by a competent •workman, •would produce a 
 beneficial effect, and be a valuable discovery. (8 M. & W. 806.) 
 At nisi prius it •was held tbat tbe omission to mention anything 
 which may be necessary for the beneficial enjoyment of the in- 
 vention is a fatal defect, aliter if such omission go only to the 
 degree of the benefit. (Web. P. G. Sll.) The omission to mention 
 in the specification anything •which the patentee knows to be 
 useful, is fatal. (16. 320.) 
 
 (?/) Macnamara v. Hulse. [1842] 
 
 In a patent for blocks for pavement, the patentee claimed as his 
 invention, that his block was bevelled both inwards and outwards 
 on the same aide of the block ; but the specification did not state 
 at what angle the bevels should be made ; and one witness stated 
 that the angle was material, but another witness stated that any 
 angle would be of some benefit : — Held, that if the jury thought 
 that a bevel at any angle would be beneficial, the specification 
 would be good, although it omitted to state any particular angle at 
 which the bevels should be made. {Car. & M. 471.) 
 
 («) Walton v. Bateman. N. P. [1842] 
 
 If a patentee knows a better mode than that ■which he states in 
 his specification of carrying out his invention, his patent is void. 
 (1 Web. P. a 622.) 
 
 (a) Tetlet v. Easton. N. P. [1852] 
 
 Pollock, O.B. : " A man has no right to patent a principle, and 
 then give to the public the humblest instrument that can be made 
 from his principle, and reserve to himself all the better part of it." 
 {Macr. P. G. 76.) 
 
 (6) Heath v. Unwin. Ex. Ch. [1862] 
 
 Coleridge, C.J., in the course of his judgment, said : " The speci- 
 fication, to be perfect, must be taken to specify impliedly all the 
 chemical equi'valents of those chemical means expresslj' stated for 
 producing the promised result, which were at the time of specifying 
 known to ordinarily-skilled chemists or to the patentee himself; 
 the latter of these seems to me to be as necessary as the former. 
 If the inventor of an alleged discovery, knowing of two equivalent 
 agents for efiecting the end, could by the disclosure of one preclude 
 the public from the benefit of the other, he might for his own profit 
 force upon the public an expensive and difficult process, keeping 
 back the simple and cheap one, which would be directly contrary 
 to the good faith required from every patentee in his communi- 
 cation with the public." (2 Web. P. G. 243.) 
 
 (c) The Patent Type Pounding Company v. Eichaeds. Ch. [1859] 
 
 The specification of an invention, which consists in the use of 
 known mateiials in new proportions, is not necessarily bad for 
 
Must he Candid, and not Misleading or Ambiguous. 443 
 
 Tinoertainty, though the patentee does not limit himself to the 
 precise proportions recommended. The patentee is bound, according 
 to the authorities, to state what he considers the best proportions. 
 A specification stated in substance, that the usual practice in 
 the manufacture of type was, to employ lead and antimony, and 
 in some cases to add a small percentage of tin ; that the object of 
 the invention was to obtain tougher metal by employing tin in 
 large proportions with antimony, greatly reducing or wholly 
 omitting the use of lead ; that the best proportions were seventy- 
 five of tin and twenty-five of antimony, but that this might be, to 
 some extent, varied ; and that, if lead were used, it must not 
 exceed fifty per cent, of the whole, one p^irt of antimony to three of 
 tin, or tin and lead, being the best : — Held, on demurrer, that the 
 specification was not bad on the face of it for uncertainty, and 
 that the evidence of persons acquainted with the usual modes 
 of manufacture was necessary to determine whether the inven- 
 tion was stated with sufficient precision. (1 John Bep. 381 ; 
 6 Jur., N. S. 39.) 
 
 (d) Mackelcan v. Eennie. [1862] 
 
 Williams, J. : " The plaintiff' in this case had obtained a patent 
 for ' improvements in floating-docts.' In the course of the trial, it 
 appeared that the construction of floating-docks was not novel. 
 The plaintiff then alleged that his invention did not consist in the 
 construction of floating-docks, but in the application of iron so as 
 to form air-tight and water-tight chambers. The Lord Chief 
 Justice was of opinion that, inasmuch as there was.no mention of 
 iron in the complete specification, the plaintiff had not complied 
 with the conditions of the letters patent by duly describing the 
 nature of his invention, and in what manner it was to be carried 
 into effect ; and, accordingly, he directed a nonsuit to be entered. 
 We are all of opinion that he was quite right in so doing." (13 
 a B., N. S. 59.) 
 
 (e) Simpson v. Holliday. [1864] 
 
 Patent for " improvements in the preparation of red and purple 
 dyes." The patentee in his specification said : '' I mix aniline 
 with dry arsenic acid, and allow the mixture to stand for some 
 time ; or I accelerate the operation by heating it to, or near to, its 
 boiling-point." The operation w^ould not succeed if conducted 
 by the first of these methods, viz. without heat. Wood, V.-C, 
 said : " If the Court had any notion whatever that it (the first 
 method) was put in with an intent to mislead, then without doubt 
 or hesitation it w^ould hold the patent to be bad ; because there are 
 two points in these cases of somewhat confused description in 
 specifications which the Court mainly attend to — whether or no it 
 has been put in with a fraudulent intent to mislead, so as to have 
 a larger claim — on the one hand, that species of fraudulent intent 
 to mislead, which at once leads the Court to decide against the 
 validity of the patent ; or, on the other hand, whether, although 
 put in innocently by mistake, and without any fraudulent intent, 
 
444 SPECIFICATION : 
 
 it is sucli a description as will or can mislead any ordinary wort- 
 man in the operation that he has to carry on." (20 Newt. Lon. 
 Jour., N. S. 108.) 
 
 (/) Ealston v. Smith. H. L. [1865] 
 
 Lord Westbury: "There were some objections raised to the 
 specification, and particularly with regard to the uncertainty of 
 the material, the language of the amended specification being that 
 the plaintiff" took ' a roller of hard metal, or other suitable material.' 
 I do not think those words ■ or other suitable material ' contain 
 anything like such a generality of direction as would be fatal to 
 the patent ; ' other suitable material ' no' doubt would mean any 
 material equally sufficient for the purpose with hard metal." (11 
 H. L. Oas. 248 ; 35 L. J., G. P. 56 ; 20 C. B., N. S. 47 ; 13 L. T. 
 Bep., N. S. 4.) 
 
 (/*) POOLEY V. POINTON. [1885] 
 
 The plaintiff patented a process for making malt bread ; in the 
 same year he issued directions as to the proportions to be used, 
 which differed from those in the specification, and in subsequent 
 years he issued corrections, one of which was marked " private " : — 
 Held, that the specification was insufficient. (2 0. B. 167.) 
 
 (g) Edison v. Woodhouse. [1886] 
 
 A patent, dated as to its final specification, May, 1880, claimed 
 an electric lamp with a carbon filament for its illuminating con- 
 ductor. The patentee took out a subsequent patent, dated as to its 
 provisional specification, December, 1879, for a method of making 
 carbon filaments for electric lamps : — Meld, that there being no 
 claim in the first patent for the manufacture of carbon filaments, 
 there had been no such want of disclosure as to avoid the first 
 patent. (32 Ch. D. 620 ; 3 0. B. 167 ; 4 0. E. 79 ; 55 L. J., Ch. 
 943 ; 65 L. T. 263 ; 34 W. B. 626.) 
 
 (K) Coles v. Batlis, Lewis and Co. [1886] 
 
 The plaintiff was the assignee of a patent for the preparation of 
 lithographic surfaces, on which designs had been produced in the 
 ordinary manner by applying suitable materials to the designs, and 
 amalgamating them by fusing so as to form enamelled designs in 
 relief. After the assignment, and before filing the complete 
 specification, the plaintiff gave instructions to a licensee of the 
 patent, headed : " Instructions for working the etching process — 
 the burning etching process." " In the case of transfers from 
 
 engravings, reliefs, &c the stone must be etched, &c." ; 
 
 and amongst other directions it was mentioned, that " the prepared 
 stone being blown dry .... being kept for thirty minutes, the 
 colour being dusted on with cottoa wool ; when this is done, the 
 whole must be covered with Trench chalk, fresh cotton wool being 
 used." And it was said, that you must be careful to use good 
 French chalk, for common French chalk would not answer. None 
 of these directions were embodied in the complete specification : — 
 
Must Specify an Improvement, and Distinguish what is New. 445 
 
 Held, as these were instructions for working the specification, and 
 as the invention might be completed so as to work by following out 
 the specification alone, that whatever might be their effect as 
 showing want of disclosure at the trial, the question was too fine 
 to prevent the granting of an interim injunction. The case was 
 settled before trial. {Griff. 68 ; 3 0. B. 178.) 
 
 (J) Thomson v. Batty. [1888] 
 
 In the specification of the plaintiff's patent for improvements in 
 compasses, and in the means for ascertaining and correcting its 
 errors, the third claim was for the employment in compasses of a 
 large bowl filled, or partially filled, with a viscous fluid. It was 
 proved that " partially filled " was necessary in order to secure the 
 complete effect, but that " filling" would give some effect : — Held, 
 that this was not sufficient to invalidate the patent. (6 0. B. 84.) 
 
 (y) Shaw «) J Jones. [1889] 
 
 In the complete specification, the claim ran : " We claim the 
 production of printing surfaces, &c., &c., by the combination of 
 type-high geometrical squares, curves, angles, &c." : — Held, that 
 the first two " &o.'s " were only put in ex abundante cautela, and 
 meant "a printing surface, or any other name that you call it 
 by " ; that they were not put in to mislead, and did not vitiate the 
 patent. The other &c. was not attacked. (6 0. B. 328.) 
 
 Mmt Specify an Improvement, and distinguish what is New from what 
 
 is Old. 
 
 (k) Williams «. Beodie. [Before 1785] 
 
 The invention was an improvement upon an old stove, but in the 
 specification the whole stove was described, including both the old 
 and new parts, without describing the invention as a new improve- 
 ment upon an old thing, and it was held, that the patent was 
 therefore void. (.Cit. Dav. P. 0. 96.) 
 
 (T) HORNBLOWER V. BOULTON. [1799] 
 
 The specification of a patent for a " method of lessening the 
 consumption of steam and fuel in fire-eagines," stated that the 
 " method consisted in the following principles," and then described 
 the mode in which those principles were applied to the purposes of 
 the invention. Lord Kenyon, O.J., in delivering judgment, said : 
 " I do not consider it as a patent for the old engine, but only for the 
 
 addition to, or improvement of, the old engine It possibly 
 
 occurred to the inventor, that if the patent were to be obtained for 
 the whole engine, it might be open to cavil, and therefore he took 
 out his patent not for the engine, but for his invention of a method 
 of lessening the consumption o' steam and fuel in fire-engines. The 
 method is disclosed in the specification, and it is by the addition of 
 what is there disclosed, and by managing it in the way described. 
 The patent therefore is only for that additional improvement as 
 
446 SPECIFICATION : 
 
 described in tlie specification ; and there is no pretence to say that 
 he claims or could claim the sole making of the old engine." 
 (8 T. B. 103.) 
 
 (m) Haemae v. Playne. [1809] 
 
 The patent in this case was granted for improvements in 
 machinery, secured by previous letters patent. It was admitted 
 by the defendant, that the improvements for which the second 
 patent was granted are included in the second specification, which 
 gives a full and proper description of the whole machine in its 
 improved state. But it was objected, that the second specification 
 does not, in any manner, point out or explain the improvements 
 upon the former patented machine, for which the second patent 
 was granted, and, therefore, that it was insufficient : — Meld, that, 
 the specification was sufficient. (11 East, 101 ; Dav. P. G. 311.) 
 Ellenborough, O.J., in the course of the argument, said : " The 
 difficulty which presses most is, whether this mode of making the, 
 specification be not calculated to mislead a person looking at it, 
 and induce him to suppose that the term for which the patent is 
 granted may extend to preclude the imitation of other parts of the 
 machine than those for which the new patent is granted ; when he 
 can only tell by comparing it with some other patent what are the 
 new, and what are the old parts ; and if, this may be done with 
 reference to one, why not by reference to many other patents, so 
 as to render the investigation very complicated ? It may not be 
 necessary, indeed, in stating a specification of a patent for an 
 improvement, to state precisely all the former known parts of the 
 machine, and then to apply to those the improvement; but, on 
 many occasions, it may be sufficient to refer generally to them. 
 As in the instance of a common watch ; it may be sufficient for the 
 patentee to say, take a common watch, and add or alter such and 
 such parts, describing them." (11 East, 107 ; Bav. P. C. 318.) 
 
 (») Mantost v. Manton. N. P. [1815] 
 
 Gibbs, C. J., in addressing the jury, said : " It is necessary that 
 the patentee should show that he has accurately explained the 
 nature of his invention in his specification, separating that which is 
 new from that which is old, so as to enable a person of tolerable skill 
 to make the thing by means of his specification." (^Dav. P. G. 
 349.) 
 
 (o) Macfaelane j>. Peice. N. P.. [1816] 
 
 A person ought to be warned by the specification against the use 
 of the particular invention. Therefore, in the specification of a 
 patent for an improved instrument, it is essential to point out pre- 
 cisely what is new, and what is old, and it is not sufficient to give 
 a general description of the construction of the instrument without 
 making such distinction, although a plate is annexed, containing a 
 detached and separate representation of the parts in which the 
 improvement consists. (1 Stark. 199 ; 1 Weh. P. G. 74.) 
 
Must Specify an Improvement, and Distinguish what is New. 447 
 
 (p) BoviLL V. MooKE. N. P. [1816] 
 
 Action for the infringement of a patent for a machine or ma- 
 chines for making lace. The specification described the whole 
 machine, without pointing out any particular part or parts of it, as 
 the invention of the patentee. Gibbs, C.J., held, that, if a combi- 
 nation of a certain number of the parts of the machine up to a given 
 point, had existed before the date of the patent, and if the paten- 
 tee's invention sprang from that point, and added other combina- 
 tions to it, then the specification, stating the whole machine as his 
 invention, was bad. (JDav. P. G. 361.) 
 
 (g) Hill v. Thompson. C. P. [1818] 
 
 If the invention be an improvement, it must distinctly appear 
 on the face of the specification to be claimed as such, and not as an 
 original discovery. (1 Web. P. G. 247.) 
 
 (r) Carpenter v. Smith. N. P. [1841] 
 
 Abinger, C.B., in his remarks to the jury, said : " It is required 
 as a condition of every patent, that the patentee shall set forth in 
 his specification a true account and description of his patent or in- 
 vention, and it is necessary in that specification that he should 
 state what his invention is, what he claims to be new, and what he, 
 admits to be old ; for, if the specification states simply the whole 
 machinery which he uses, and which he wishes to introduce into 
 use, and claims the whole of that as new, and does not state that he 
 claims either any particular part, or the combination of the whole 
 as new, why then his patent must be taken to be a patent for the 
 whole, and for each particular part, and his patent will be void if 
 any particular part turns out to be old, or the combination itself 
 not new." (1 Web. P. G. 532.) 
 
 (s) Gibson v. Brand. [1842] 
 
 Cresswell, J. : " Every party is bound to tell the public clearly, 
 by his specification, what he claims, and what they may do, or not, 
 do, without risk of an action for infringing his patent." (1 Weh. 
 P. G. 640.) 
 
 («) Crane v. Price. [1842] 
 
 It is no objection to the validity of a patent that the invention 
 cannot be used except by means of a former patented invention, 
 where the second patentee expressly disclaims any part of such 
 former invention. (4 Jf. & O. 580.) Tindal, C.J., in delivering 
 the judgment of the Court, said : " Unless the grantee of the new 
 letters patent is bound by law to specify whether such former in- 
 vention, which is excepted, was so excepted on the ground of its 
 being generally known, and used by the public, or because it was 
 the subject of a patent which secured the use of it to a former 
 patentee, the new patent will be good. But that distinction is as 
 much in the knowledge of the public as in that of the grantee of 
 the patent. If, indeed, the new patent had been taken out for an 
 
448 SPECIFICATION: 
 
 improvement or alteration of an invention secured by a former 
 patent, then, for obvious reasons, a greater particularity vi'-onld be 
 necessary to distinguisli tbe new from the old." (26. 608.) 
 
 (m) M' Alpine v. Mangnall. [1846] 
 
 If, taking the whole specification together, and giving its words 
 a fair and reasonable interpretation, the Court can see that the 
 specification only claims an improvement on an old machine, it will 
 be sufficient. (3 0. B. 518.) 
 
 («) Holmes v. The London and North-Western Eailway Com- 
 pany. [1852] 
 
 The plaintiff obtained a patent for " an improved turning-table," 
 all the component parts of which, except one, were comprised in a 
 prior patent, the specification of which was not enrolled until after 
 the date of the plaintiif's patent. The plaintiff, in his specification, 
 claimed "the improved turning-table hereinbefore described," 
 without showing that any part of it was old. The jury found that 
 the introduction of certain suspending rods made the table a new 
 instrument : — Held, that the specification was bad, as it did not 
 distinguish what was new from what was old. (Macr. P. G. 13.) 
 
 (w) Tetley «.. Easton. [1853] 
 
 A specification describing a patent invention must, unless a con- 
 trary intention appears, be deemed to claim all that it describes, 
 not only as a whole taken in combination, but also all the essential 
 parts of which such combination is composed. (2 Ml. & Bl. 956 ; 
 Macr. P. G. .82.) Coleridge, J., said : " This rule may, perhaps, 
 admit of some modification in favour of the patentee, in respect of 
 things incidentally mentioned, which are old and universally 
 known to be so ; for, if he had occasion to introduce a hinge into 
 his machinery, it would be absurd to expect that he should point, 
 out that the hinge was not new." (Macr. P. C. 87.) 
 
 (aj) Lister v. Leather. [1858] 
 
 A patent for a combination is not a claim that each part thereof 
 is new. (8 E. & B. 1004 ; 8 Jur., N. S. 811.) Afiirmed on appeal 
 to the Exchequer Chamber: — Seld, also, that a patent is a patent 
 for a combination, if a combination is distinctly stated in the speci- 
 fication to be a part of the invention, although the combination is 
 not expressly claimed ; for a claim was not an essential to a speci- 
 fication, or necessary for the protection of the invention. Nor is it 
 necessary to disclaim those matters which manifestly form no part 
 of the invention. (8 ^. * B. 1031 ; 27 L. J., Q. B. 295.) 
 
 (y) Morton v. Middleton. [1863] 
 
 Lord President : " The usual mode of claiming as new merely a 
 combination or arrangement of certain things, not in themselves 
 new, is to set forth, that what the patentee claims is not each of 
 the parts, but the combination and arrangement of them, so as to 
 produce either a new result, or a greater and better one than has 
 
Must Sfecify an Improvement, and Distinguish what is New. 449 
 
 been attained before. But this course is not essential. If it 
 appears from tlie reading of the document, that, although the 
 patentee does not in so many words say, ' I limit my claim to so 
 and so,' — yet if it plainly enough appears that he actually does 
 only claim so and so, that is enough." (1 Gr. S., Srd Ser. 722.) 
 
 (z) New-Ail v. Elliott. [1864] 
 
 Pollock, C.B. : " The patentee of a combination is bound to state 
 what parts of the combination he claims to be new, or what parts 
 of the combination , he has taken from that general stock of 
 knowledge which is common to all the public." (10 Jur., N. S. 
 956.) 
 
 (a) Ebnakd v. Levinstein". Ch. [1864] 
 
 Lord Justice Knight Bruce : " Considering the different conse-- 
 quenoes that may arise as to the part of an invention cominunioated 
 from a foreign country, and as to the part of the same invention, or 
 set of inventions, which may be deemed to be in every respect new, 
 I consider it to be a serious and very arguable question, whether it 
 is or is not incumbent on the patentee to distinguish, to define, and 
 to particularize what is new and what is old," (10 L. T. Sep., N. S. 
 177.) 
 
 (6) PoxwELL V. BosTocK. Ch. [1864] 
 
 In a patent for an improved arrangement or new combination of 
 machinery, the specification must describe the improvement and 
 define the novelty, otherwise, and in a more specific form, than by 
 the general description of the entire machine. It is not sufficient 
 that a person possessed of all the knowledge existing at the time of 
 the patent on the subject-matter of the patent, will discern the im- 
 provement ; or, that it may be discovered upon a minute comparison 
 and collation of all existing combinations with the new combina- 
 tion that is claimed. The term " combination of machinery " is 
 nothing but an extended expression of the word " machine." (10 
 L. T. Bep., N. S. 144; 12 W. B. 723.) (But see Harrison v. Ander- 
 ston Foundry Company, post, p. 450 (g).) 
 
 (c) Dangbrfield v. Jones. Ch. [1865] 
 
 • Where the patented machine or apparatus is entirely new, the 
 patentee is not bound to describe and distinguish the different 
 parts ; but where the invention consists of a machine which is only 
 an improvement upon an old machine, he must distinguish and 
 describe all the parts which he claims as new. (13 L. T. Bep., N. 8. 
 144.) 
 
 {d) Daw «. Eley. Ch. [1865] 
 
 Where a specification, in the first instance, describes the inven-- 
 tion in too general terms, but afterwards, in describing the method 
 of performing the invention, refers to certain figures in drawings 
 annexed thereto, and the claim made is for the manufacture of the 
 invention desorjbed with reference to tho^e figures, the specification 
 
 2 G 
 
450 SPECIFICATION : 
 
 is sufScient. Tlie patent was for improvements in central-fire 
 breech-loading cartridges. The specification, describing the method 
 of performing the invention, referred to certain figures in drawings 
 annexed thereto, but did not distingui>h between what was new 
 and what was old. The patentee claimed "the manufaciure of 
 cartridges described with reference to figs. 1, 2, and 1* ; and I 
 also claim the manufacture of cartridges described with reference 
 to figs. 3, 4, and 3* : " — Held, that the patent might be upheld by- 
 limiting the claim (as in Seed v. Higgins) for the manufacture of 
 cartridges described with reference to the above-mentioned figures, 
 (i. B., 3 Eq. 500 n, 518 ; 14 W. B. 126 ; 13 L. T. Bep., N. S. 399.) 
 
 (e) Paekes v. Stevens. [1869] 
 
 Where a patentee has taken out a fresh patent for improvements 
 on his original invention, it is sufScient, if, reading his second 
 specification with the first, an artisan would have no substantial 
 difiiculty in ascertaining what was claimed. (L. B., 8 Eq. 358 ; 
 judgment affirmed, L. B., 5 Ok 36.) Sir W. M. James, V.-C, in 
 the course of his judgment, said : " It is obvious that a patentee 
 does not comply, as he ought to do, with the condition of his grant, 
 if the improvement is only to be found, like a piece of gold, mixed 
 up with a great quantity of alloy, and if a person desiring to find 
 out what was new and what was claimed as new, would have to get 
 rid of a large portion of the specification by eliminating from it all 
 that was old and common-place, all that was the subject of other 
 patents, or of other improvements, bringing to the subject not 
 only the knowledge of an ordinarily skilled artisan, but of a 
 patent lawyer or agent." (L. B., 8 Eq. 365.) See also Murray v. 
 Clayton (L. B., 7 Ch. 585, 587). 
 
 (/) Weight v. Hitcjhcock. [1870] 
 
 A patent was taken out by W. for " improvements in the 
 manufacture of frills or rufiSes, and in the machinery or apparatus 
 employed therein." The specification described a process of 
 plaiting fabrics by means of a reciprocating knife in combination 
 with a sewing-machine : — Held, that looking at the whole speci- 
 fication and claim, the sewing-machine was treated as a known 
 invention alreadj' in use, and that it was distinct from the mode of 
 crimping or plaiting to which the plaintiff laid claim. (39 L. J., 
 Ex. 97 ; L. B., 5 Ex. 37.) 
 
 (3) Haeeison v. Anderston Foundey Company. H. L. [1876] 
 
 Eeferring to the case of Foxwell v. Bostoch (4 De G. J. <& S. 298), 
 Lord Cairns, L.C., said: "It is said to have been determined in 
 that case, that where there is a patent for a combination there 
 must be a discovery or explanation of the novelty, and the 
 specification must show what is the novelty and what the merit 
 of the invention. I cannot think that, as applied to a patent for a 
 combination, this is, or was meant to be, the effect of the decision 
 in Foxwell v. Bostoch. If there is a patent for a combination, the 
 combination itself is, ex necessitate, the novelty ; and the com- 
 
Must Specify an Improvement, and Distinguish what is New. 451 
 
 bination is also the merit, if it he a merit, which remains to be 
 prcived by evidence." {L. It., 1 App. Gas. 577.) Lord Hatherley, 
 referring to the same case, said : " It was there held — and that, I 
 tbink, was all that was held — that it is not competent to a man to 
 take a well-known existing machine, and having made some small 
 improvement, to place that before the public and say, ' I have 
 made a better machine. There is the sewinf^-mnchine invented by 
 so and so ; I have improved upon that. That is mine ; it is a 
 much better machine than his.' That will not do ; you must state 
 clearly and distinctly what it is in which you say you have made 
 an improvement. To use an illustration which was adopted, I 
 think, by Lord Justice James in another case, it will not do, if 
 you have invented the gridiron pendulum, to say, ' I have in- 
 vented a better clock than anybody else,' not tolling the public 
 what 3'ou have done to make it better than any clock which is 
 known." (76. 683.) 
 
 Qi) Clark v. Adie (First App.). H. L. [1877] 
 
 Where a person has invented an improvement in the form of a 
 particular apparatus or machine, but combines that individual 
 improvement with other things which are not his invention, his 
 upecification must claim that particular individual thing, and 
 not leave it doubtful whether the claim is made for the whole 
 combination, of which that thing reallj' only forms a part. 
 (L. B., 2 App. Gas. 315.) Lord Hatherley: "The case of 
 Foxwell V. Bostock (4 Be Q. J. & S. 298) decides this, that where 
 you take a well-known machine (as the sewing-machine was in 
 that case and as the horse-clipper was in this), an instrument 
 which was well-known before the date of the patent, you may, if 
 you think fit, improve all the various parts of that machine by 
 introducing into two or three of its definite parts, if there are so 
 many, that which is new either by way of combination, or by way 
 of discovery, and you may claim for each of those parts into which 
 you have so introduced something new, the privilege of protection, 
 just as if you had taken out letters patent for each of those new 
 things separately — and you may claim for those parts A, B and C, 
 which, considered as separate things, are in themselves deserving 
 of a patent — yon may claim for them, when united, a beneficial 
 result which may entitle you to a patent for the whole machine. 
 But, I apprehend, my lords (and I do not read the decision in 
 the case of Foxwell v. Bostock as deciding more than I am stating), 
 you must, in some way or other, inform those whom you are 
 dealing with, by which I mean the general public — whom you 
 wish to exclude for a certain limited number of years from 
 using your invention, — you must inform them, in some mode or 
 other, whether you have subdivided, if I may nse the term, your 
 machine into those separate parts aiud claim for each part the merit 
 of novelty, or whether you are simply making a combination of 
 things per se old, but which have never been used before in 
 combination, and which make up, as you say, your machine, for 
 which you claim protection as a novel and useful machine, and 
 '^ 2 G 2 
 
452 SPECIFICATION ; 
 
 which machine must not be made by anybody but yourself. If 
 you claim protection also for a portion of the machine you must 
 make it plain, I do not say necessarily by words or by any 
 particular mode, but, in some definite mode or other, you must 
 point out what is the combination of parts which you ask to 
 liave protected, and what are the subordinate parts which also 
 you ask singly and respectively in themselves to have protected." 
 (16. 328.) 
 
 (i) Eades V, Starbdck Wagon Company. [1881] 
 
 In an action for infringement of a patent for improvements in 
 "the construction of tramcars, described as being a method of 
 Tuaking the body of a tramcar so as to swivel upon the under- 
 frame : — Held, that the specification was bad, because it did not 
 describe either au addition to or improvement upon an old 
 invention, but it specified an invention for turning tramcars, 
 which was in fact the subject of an old patent of which the 
 patentee, when he took out his patent, had never heard. {W. N., 
 1881, 160.) 
 
 ■(_;■) MooRE V. Bennett. H. L. [1880-4] 
 
 "When a claim is made for a general combination and arrange- 
 ment of the different parts of a machine, if the Court sees that the 
 combination is not new, but that there is some particular improve- 
 ,ment in some particular part, it will not do to claim the whole 
 combination as new, but you must condescend upon that which is 
 improved. Upon the principle that the specification should not 
 be vague but should give sufficient information, it ought not to 
 disguise the real invention by a claim so wide that any one would 
 suppose something to be claimed as new which is not. Where 
 the claim is for a combination and not for particular subordinate 
 things included in that combination, if the combination is a ne-vy 
 one, and if the manner of arriving at it and working it, and the 
 purpose for which it is useful are all properly, sufficiently and 
 correctly described in the specification, so that any one acquainted 
 with the subject will know in what respect it differs from the 
 things which have gone before, then it would be contrary to the 
 whole policy which allows such combinations to be the subject of 
 a patent, to say that besides describing the manner of doing it in 
 a way which would show every one acquainted with the subject 
 what was the novelty in the thing, you are to go on, and although 
 you do not want to claim subordinate parts as distinct from the 
 entire combination, nevertheless you must specify the subordinate 
 parts as constituting new elements. {Griff. 158, 1 O. B. 129.) 
 
 If the case of Foxioell v. Bostoclc were to be taken as it was 
 understood before it was explained in Marrison v. Anderston 
 Foundry Company, it would make it impossible to draw a good 
 specification for a .combination of old materials without such, a 
 degree of prolixity as would render it practically impossible. 
 (1 0. B.I 4:\), Griff. 162.) 
 
Must Specify an Improvement, and Distinguish ivhat is New. 453 
 
 (h) Cartsbuen Sugar Eefining Company v. Sharp. [1884] 
 
 A patent for an improvement must distinctly specify the part of 
 the machine which is alleged to be improved, and the particular 
 improvement for which protection is claimed. 
 
 In the specification the first claim was, " First, in a sugar- 
 moulding machine the rotatory drum and iseiies of moulds combined 
 with the hopper and distributors and the packer is inclined 
 towards and adapted to fill the moulds substantially as desciibed." 
 The only part of this, which could be said to be novel, was the 
 packer: — Held,hy Lord Kinneir, that the claim was bad, inasmuch 
 as no one would, without a knowledge of the previous patents, 
 suppose from the specification that the novelty for which protection 
 was claimed was the packer. (1 0. B. 181.) 
 
 (1) EowcLiFFE V. Morris. [1885] 
 
 In an action for infringement of a patent for improvements in 
 frames for spring mattresses, it appeared that the invention was in 
 fact a combination of four old parts, viz. (1) a rectangular frame, 
 
 (2) a transverse adjiistable bar resting thereon, (3) adjustable 
 screws passing into or through the bar, and (4) webbing fixed to 
 the end of the framework aud held in tension by the adjustable 
 screws : — Held, by Bristowe, V.C. (after a careful consideration of 
 Foxwell V. Bostoclc, and Harrison v. Andersion Foundry Company), 
 that, as there was nothing in the specification to show that the 
 invention claimed was limited to the combination, the patent was 
 invalid. (3 0. JR. 17.) 
 
 (I *) Pairburn and Hall v. Household and Eoshee. [1886] 
 
 The plaintiffs' patent, which was for improvements in tramcar 
 engines, was held invalid on the ground that the specilication did 
 not indicate with any approach to clearness or certainty what the 
 patentee claimed as new. (3 0. B. 128.) 
 
 (Zf) Watling 4). Stevens. C. A. [1886] 
 
 The plaintiffs patent was for improvements in spring tip-vans. 
 The specification was sufSciently clear to inform any person of 
 adequate knowledge that what really was claimed was the combi- 
 , nation of three things : friction rollers to move the frame ; mechan- 
 ism by which the rolling back produced the tipping ; and the 
 control over the angle of the tip : — Held, that the specification, 
 although it was as near as possible to being bad, did just suffi- 
 ciently discriminate between what was new and what was old. 
 (3 0. B. 41, 153.) 
 
 (m) Proctor v. Bennis. C. A. [1887] 
 
 Where a patent is taken out for a combination, and the com- 
 bination is the invention, if that invention is new, it is immaterial 
 to its validity whether the patentee has pointed out how far he 
 does or does not claim particular portions, though if an alleged 
 infringement consists only in taking part of the combination it is 
 
454 SPECIFICATION : 
 
 necessary that the patentee should have claimed the part so taken 
 as new. Curtis v. Piatt (see p. 192 (m)), distinguished on the ground 
 that there the result was old, and the novelty of the invention 
 consisting only in improvements in a known machine for producing 
 that known result, the patentee was strictly tied down to the mode 
 described of eifecting the improvements. (36 Ch. D. 740.) 
 
 {m *) Kaye v. Chubb. H. L. [1888] 
 
 Watson, L. : " If you claim a combination you need not say 
 which of the parts are old." (5 0. B. 641, at p. 649.) 
 
 (n) Boyd v. Hoeeocks. C. A. [1889] 
 
 The plaintiifs patent was for improvements in machinery for 
 winding yarn or thread. In the specification the plaintiff said, 
 " In a sixth detector arrangement, which is shown in fig. 14, the 
 detectors are wires hanging on the yarns or threads, and guided on 
 a swinging plate carried on by a horizontal wire or rod and having 
 fixed on it the catch-plate holding up the slip lever arm. ... I 
 do not claim the combination of the swinging plate with the 
 detector wires and rotating wiper shaft, but merely the application 
 to that combination of the catch-plates with their arrangement in 
 relation to the lever." Arrangements by which, when a thread is 
 broken, a portion of the machinery, leaving the rest going on, 
 had been stopped by means of detector wires, were very old : — 
 Held, that the plaintiff's invention being to do, what had been done 
 long ago, by improved means, the rule laid down in Curtis v. Piatt 
 applied, viz. that where there is a well-known machine, and there 
 is an improvement in a part of that machinery for effecting the 
 old object, though in a better way, you must confine the patentee 
 to the improvement which he claims in effecting that particular 
 object. The question does not come to be whether the alleged 
 infringement is or is not a mechanical equivalent, but have you 
 really taken in substance that which was the invention of the 
 plaintiff :—B(3Zd, also, that, owing to the disclaimer, catches in the 
 claim could not lefer to any catch, whatever might be the means of 
 effecting it, that the machinery being old the plaintiff ought to be 
 confined to the particular details invented by him and introduced 
 as improvements into the old machinery, and that as the defendant 
 did not use catch-plates anything like the plaintiff's there was no 
 infringement. (6 0. B. 152.) 
 
 Claiming t o much. 
 (o)E. u. Else Sci.fac. [1785] 
 
 Where a patent claimed the exclusive liberty of making lace, 
 composed of silk and cotton thread mixed, and not any particular 
 mode of mixing, it was held to be void, on proof that silk and 
 cotton thread had been before mixed on the same frijme for lace, 
 although not in the same mode. (1 Weh. P. C. 76.) 
 
Must not Claim too Much. 455 
 
 (p) HUDDAET B. GKIiVlSHAW. N. P. [1803] 
 
 Ellenborough, C.J., in addres.sing the juiy, said: "In claiming 
 the benefit of a patent, it is required that there shall be enrolled a 
 specification, which shall convey to the public a corresponding 
 advantage with that of the individual whose sole right is protected 
 for that time, so that any person looking at a specification, who 
 is skilled in the subject, may be able to accomplish the end ; 
 and if, in stating the means necessary to the . production of that 
 end, he oversteps the right, and appropriates more than his own, 
 he cannot avail himself of the benefit of it." (Dau. P. C. 279 ; 
 1 Weh. P. a 86.) 
 
 (g) BoviLL V. MooEE. N. P. [1816] 
 
 Gibbs, C.J., in the course of his remarks to the jury, said : " If 
 the plaintiff has in this specification asserted to himself a larger 
 extent of invention than belongs to him, if he states himself to 
 have invented that which was well known before, then the specifi- 
 cation will be bad, because that will affect to give him, through the 
 means of this patent, a larger privilege than could legally be 
 granted to him." (Dav. P. G. 404.) If the patentee has claimed 
 too much, it is immaterial whether he has done so fraudulently or 
 inadvertently. (lb. 414.) 
 
 (f) Hir.L V. Thompson. Ch. [1817] 
 
 Bldon, L.O. : " The specification must not attempt to cover more 
 than that which, being both matter of actual discovery, and of 
 useful discovery, is the only proper subject for the protection of a 
 patent. And I am compelled to add, that if a patentee seeks by 
 his specification any more than he is strictly entitled to, his patent 
 is thereby rendered ineffectual, even to the extent to which he 
 would be otherwise fairly entitled. On the other hand, there may 
 be a valid patent for a new combination of materials previously in 
 use for the same purpose, or for a new method of applying such 
 materials. But, in order to its being effectual, the specification 
 must clearly express that it is in respect of such new combination 
 or application, and of that only, and not lay claim to the merit of 
 original invention in the use of the materials. If there be a patent 
 both for a machine and for an improvement in the use of it, and 
 it cannot be supported for the machine, although it might for 
 the improvement merely, it is good for nothing altogether, on 
 account of its attempting to cover too much." (1 Weh. P. C. 237 ; 
 3 Mer. 629.) 
 
 (s) Bloxam v. Elsee. [1827] 
 
 The patent was for a machine for making paper in single sheets, 
 without seam or jointing, from one to twelve feet and upwards 
 wide, and from rjne to forty-five feet and upwards in length : — 
 Held, that this imported that paper, varying in width between 
 those extremes, should be made by the same machine, and that the 
 patentee at the time of taking out the patent, not having any 
 
456 SPECIFICATION: 
 
 machine capable of producing paper of different widths, the patent 
 was void. (6 B. dc C. 169 ; 9 B. d B. 215.) 
 
 (<) Lewis «. Marling. [1829] 
 
 A patent is not voided by the specification claiming as part, but 
 not as an essential part of the invention, something which proves 
 useless. (6 M. d B. 66; 10 B. d: C. 22 ; 4= C. (& P. 56.; 1 Web. 
 P. a 493.) 
 
 (u) MiNTER V. MOWEE. [1837] 
 
 " Patent for an improvement in the construction, making, or 
 manufacturing of chairs." The specification thus concludes : 
 " What I claim as my invention is, the application of a self-adjusting 
 leverage to the back and seat of a chair, whereby the weight on 
 "the seat acts as a counter-balance to the pressure against the back 
 of such chair as above described." It appeared from the evidence, 
 that a chair, acting upon the same principle as that which the 
 patentee claimed, had been constmcted and sold by a person of the 
 name of Brown, before the date of the patent ; this chair had, how- 
 ever, been encumbered by additional machinei-y : — Held, that the 
 specification was bad. (6 A. & E. 735 ; \ N.&P. 596 ; W.W.d D. 
 262 ; 1 Web. P. G. 142.) Denman, O.J., said : " The specification 
 claimed more than the plaintiff had invented, and would have 
 actually precluded Brown from continuing to make the same chair 
 that he had made before the patentee's discovery. We are far 
 from thinking that the patentee might not have established his. 
 title by t-howing that a part of Brown's chair could have effected 
 that for which the whole was designed. But his claim is not for 
 an improvement upon Brown's leverage, but for a leverage so 
 described that the description comprehended Brown's." (6 A. & E. 
 746.) 
 
 (v) Gibson v. Beand. [1842] 
 
 If the patentee claims as his invention improvements in ma- 
 chinery, or a new combination of machinery, and the jury find that 
 he has only invented an improved process, the patent is void. 
 (1 Web. P. a 631 ; 4 jr. <e (?. 179 ; 4 Scott, N. B. 844.) 
 
 (w) Gamble v. Kuetz. [1846] 
 
 Where a patent was granted for improvements in apparatus for 
 the manufacture of certain chemical substances, and the jury 
 found that the apparatus itself was not new, but that the patentee's 
 mode of connecting the parls of that apparatus was new, the Court 
 directed the verdict to be entered for the defendant, as the patentee 
 had claimed more than was new. (3 C. B. 426.) 
 
 (a;) Beaed v. Egeeton. [1849] 
 
 Maule, J. : " If you describe in a specification two ways of doing 
 a thing, and by one way it cannot be done, the specification is bad." 
 (19 1,. /., a P. 40.) 
 
Must not Claim too Much. 457 
 
 (y) E. V. CuTLEE. [1849] 
 
 The specification of a patent for " improvements in the con- 
 struction of the tubular flues of steam boilers," described two modes 
 of performing one part of the invention, either of which it was 
 stated would produce the effect. At the trial the judge told the 
 jury that, if either mode succeeded, the patent might be good, 
 notwithstanding the imperfection of the others : — Seld, that this 
 was a misdirection. Denman, C.J., delivering the judgment of the 
 Court, said : " I told the jury that if either of those metho Is were 
 proved satisfactorily to do the work, the patent might be good, 
 notwithstanding the imperfection of the other. The case of Lewis 
 V. Marling had been quoted as establishing that doctrine, but on 
 examination we find that the Court then only said that the claim 
 of some part of the machine which turned out to be useless, did not 
 vitiate the patent. This is certainly a very different thing from 
 describing a part of the machine as capable of co-operating in the 
 work, when in fact it is incapable, even though, at the same time, 
 other means are described which might be effectually employed. 
 The reader of the specification, relying upon it, might attempt to use 
 the former mode in constructing the machinery, which would fail 
 of its purpose from being too accurately made according to the 
 patentee's instructions." (Macr. P. G. 137 ; 14 Q. B. 372 (n.)) 
 
 (z) TErLEY V. Easton. N. p. [1852] 
 
 By making a general claim, a patentee cannot include in his 
 patent improvements of which he was ignorant at the date of his 
 patent. {Macr. P. G. 77.) 
 
 (a) Ceossley v. Potter. N. P. [1853] 
 
 Pollock, C.B. : " In my mind, the safest course for patentees to 
 adopt in framing their specifications is, instead of including every- 
 thing, to confine themselves specially to one good thing, and a jury 
 will always take care that if that be a real invention, no man, under 
 colour of improvement, shall be allowed to interfere with that which 
 is the offspring of their genius." {Macr. P. G. 256.) 
 
 (6) Booth v. Kennaed. [1857] 
 
 Action for the infringement of a patent for " improvements in 
 the manufacture of gas." The specification stated that the mode 
 of using seed, and constructing the apparatus, might be the same 
 as the apparatus used in the ordinary mode of making gas with 
 coal, but that the inventor preferred placing the seed in a red-hot 
 retort, of which a plan was given. The claim was as follows : " I 
 claim for making gas direct from seeds, and matter herein named, 
 for practical illuminations, or other useful purposes, instead of 
 making it from the oils, resins, or gums, previously extracted from 
 such substances." A previous patentee had, by his specification, 
 proposed, for the manufacture of gas, to use fatty substances, such 
 as greaves or graves ; also the lesiduum after the oil had been 
 expressed from seeds, such as oil-cake ; also beech-nuts, mast, codoa- 
 
'458 SPECIFICATION : 
 
 nuts, and other matters abounding in oil, and he proposed to use 
 these substances separately and in combination : — Held, that the 
 claim was too large, being a claim to make gas direct from seeds 
 by any mode after a prior patent for making it by a particular 
 mode, and, Semhle, that irrespective of the prior patent, the speci- 
 fication was bad. (2 H. c6 JV. 84 ; 2tj L. J. Ex. 305.) 
 
 (c) Thomas v. Foxwell. Ex. Ch. [1869] 
 
 The patentee of a sewing-machine, in his specification, claimed 
 " the application of a shuttle in combination with a needle, as shown 
 in sheet 1 , for forming and sewing loops of thread or other substance, 
 for the purpose of producing stitches either to unite or ornament 
 fabrics, whatever may be the means emf)loyed for working such 
 shuttle and needle when employed together : " — Held, that this 
 claim was not confined to the single application of a shuttle in com- 
 bination with a needle, as shown in sheet 1, but extended generally 
 to the application of a shuttle with a needle for the attaining the 
 object therein stated ; and, as the shuttle and needle had been used 
 together previously, the patent was void. (5 Jur., N. S. 37 ; affirmed 
 in Ex. Ch , 6 Jur., N. S. 271.) 
 
 (d) Seed v. Higsins. H. L. [1860] 
 
 The plaintiff took out a patent for an improvement in machinery 
 used for roving cotton. His specification claimed the discovery 
 of the application of the principle of centrifugal force for such 
 purpose, but he filed a disclaimer, declaring that he intended to 
 claim only the application of centrifugal force in the particular 
 manner represented in drawings attached to the specification : — 
 Held, that, taking the specification and disclaimer together, they 
 sustained the patent for the invention of the particular machine 
 described in the drawings. (8 E. & B. l&b, 771 ; 27 L. J., 
 Q. B. 148, 411.) Affirmed in the House of Lords (8 H. ofL. Cas. 
 ,650.) Xiord Chelmsford, in delivering his judgment in the House 
 of Lords, said : " Assuming that the specification had been origi- 
 nally bad, on account of the generality of the claim, I see nothing 
 in the Act of Parliament which prevents such an objection as this 
 being removed, the only limitation to a disclaimer of any part of 
 the specification being that it shall not extend the exclusive right 
 granted by the letters patent." (8 H. L. Cas. 568.) 
 
 (e) Simpson v. Holliday. H. L. [1866] 
 
 A patent for " improvements in the preparation of red and 
 purple dyes," thus described the process : " I mix aniline with dry 
 arsenic acid, and allow the mixture to stand for some time, or I 
 accelerate the operation by heating it to, or near to, its boiling 
 point, until it assumes a rich purple colour." It was proved (and 
 not denied by the patentee) that it was necessary to apply heat in 
 order to produce the colour ; but evidence was given that a com- 
 petent workman would apply heat : — Held, however, that this 
 description in the specification was bad, and the patent founded 
 
Must not Claim too Much. 459 
 
 thereon was invalid. (13 W; B. 577; 12 L. T. Bep., N. S. 99. 
 Affirmed in the House of Lords, L. Bep., 1 H.L.B\b; 35 L. J., 
 Gil. 811.) Westbiiry, L.C., hearing the case on appeal from Wood, 
 V.-C.,_ in the course of his judgment, said : " If the true con- 
 struction of tlie specification be, that two distinct processes are 
 described' as being both efficient, and are both claimed as part of 
 the invention, but one is found upon trial to be inefficient and 
 useless, it is plain that the patent has been granted on a false 
 suggestion, and is, therefore, invalid and bad at law." (13 W. B. 
 678. 
 
 (/) EusHTON V. Ceawley. Ch. [1870] 
 
 _ Sir E. Malins, V.-C. : " The public must be told in very 
 distinct language in every specification, what are the articles 
 they may use, and what they may not use. Therefore, if a man 
 maJjies a discovery, and, instead of limiting himself in his speci- 
 fication to that which properly is the discovery (if it be one), 
 makes his specification too extensive, and claim more than he 
 is entitled to claim, that is calculated to embarrass the public; 
 and is, I apprehend, a fatal objection to the patent." (L. B., 
 10 Eq. 527.) 
 
 (g') Arnold «;. Bradbury. Ch. [1871] 
 
 Where a patentee, in his specification, professes to do by ma- 
 chinery what has never been done before by machinery, and 
 describes the machinery by which he does it, his claim is not too 
 J.arge on the face of it, because it claims generally to perform the 
 operation " by machinery." A patentee in his specification described 
 an improved ruffle or frill, and the machinery by which he pro- 
 posed to make such improved ruffle, and to fasten it to a plain 
 fabric by a single series of stitches. By his claim he claimed "the 
 production by machinery of ruffles, and the simultaneous attach- 
 ment of them to a plain fabric by a single series of stitches : " — 
 Held, that the claim was not, on the face of it, too large. (L. B., 
 6 Ch. 706.) 
 
 Qi) Gandy v. EiDdaway. C. A. [1885] 
 
 The plaintiff's claim was for constructing belts or bands for 
 driving machinery of cotton canvas or duck woven hard. There 
 were ten kinds of hard-woven canvas, and belts for the purposes 
 specified could not be made out of all of those kinds, but only out 
 of some of them : — Held, that the specification was bad, as the 
 claim was for making belts out of the whole class, whereas for 
 business purposes they could only be made from a part of that 
 class. (2 0. B. 49.) 
 
 (j) Watling v. Stevess. C. A. [1886] 
 
 The plaintiff's patent was for improvements in spring tip vans, 
 and was plaimed as applicable to vans on two or four wheels. It 
 was proved that the invention was useful in the case of four- 
 
'460 SPECiriCATIOK : 
 
 -wheeled vans, anS that it was applicable, hut not that it was an 
 improvement, in the case of two-wheeled vans : — Seld, that the 
 ■claim was not too wide. (3 0. B. 147.) 
 
 (/) Kurtz v. Spence. [1887] 
 
 Although a patentee is not hound to prove his invention to he 
 commercially useful, nor to explain which of several methods is 
 the best, yet he is hound to state what methods are possible, and 
 to avoid stating as possible the methods, if any, which are not. 
 The plaintiffs had claimed the use of peroxide of manganese, 
 whether hydrated or anhydrous, and it appeared that the anhy- 
 drous oxide was for commercial purposes useless : — Held, that the 
 patent was void. (5 0. B. 161.) 
 
 (g) Cole v. Saqui. [1888] 
 
 A patentee may say in his specification that his invention is 
 capable of application to other purposes beyond those specified 
 without thereby invalidating his patent. (5 0. B. 489.) Eeversed 
 on Appeal, but on another ground. (6 0. B. 41.) 
 
 Construction of Complete Specification. 
 
 Patents Act, 1883, Form D; The Form of Patent ccmchidcs as follows: 
 " And lastly we do by these presents for us, our heirs and successors grant 
 unto the said patentee that these our letters patent shall be construed in tue 
 most beneficial sense for the advantage of the said patentee." 
 
 (h) FOKSYTH V. ElVIERE. [1819] 
 
 Patent for a " method of discharging or giving fire to artillery, 
 and all other fire-arms, mines, chambers, cavities and places in 
 which gunpowder, or other combustible matter, is or may be put 
 for the purpose of explosion." The specification pointing out how 
 the invention was to be carried out : — Seld, that the patentee was 
 entitled to the exclusive application of the detonating mixture as 
 priming, whatever the construction of the lock by which it was 
 discharged. (1 Web. P. C. 97.) 
 
 (i) HuLLETT V. Hague. [1831] 
 
 Lord Tenterden, C.J. : " I cannot forbear saying, that I tliink 
 a great deal too much critical acumen has been applied to the 
 constmction of patents, as if the object was to defeat and not to 
 sustain them." (2 B. & Ad. 377.) 
 
 (f) Hawoeth v. Haedoastle. [1884] 
 
 Tindal, C.J. : " There can be no rule of law which requires the 
 Court to make any forced construction of the specification, so as to 
 extend the claim of the patentee to a wider range than the facts 
 would warrant ; on the contrary, such construction ought to be 
 made as will, consistently with the fair import of the language 
 used, make the claim of invention co-extensive with the new 
 discovery of the grantee of the patent." (1 Web. P. C. 485.) 
 
 A patentee is to be presumed not to claim things which he 
 must have known to be in general use. (76. 484.) 
 
Constriction. 461 
 
 (/c) MiNTEE V. Wells. [1834] 
 
 In summing up his invention, a patentee stated it thus : — " My 
 invention is the application of a self-adjusting leverage to the back 
 and seat of a chair, whereby the weight on the seat acts as a counter- 
 balance to the pressure against the back of such chair, as above 
 described :" — Held, that this was not a claim to the principle of the 
 lever, but to an application of that principle to a certain purpose, 
 by certain means, and that the patent was good. (1 G. M. & B. 
 505; 5 Tyr. 163; 1 Web. P. G. 134.) 
 
 (I) Deeosne v. Fairie. [1835] 
 
 The patentee, who was a Trenchman, used in his specification 
 the word "discolouring" to signify depriving of colour, and the 
 word " baked," instead of the word crystallized : — Held, that this 
 did not render the speciidoation void. (5 T-gr. 393 ; 2 Gr. M. & B. 
 476; 1 Web. P. G. 158; 1 Gale, 109.) Matters of construction 
 that arise (jn the face of the specification are for the Court, subject 
 to the sense put upon the terms of art by the jury. (1 Web. P. G. 
 156.) 
 
 (m) Mintee v. Mowee. N. P. [1835] 
 
 It is quite indifferent whether a word used in a specification is 
 the correct description of the thing, provided it describes it so that 
 no man can doubt what it is. (1 Web. P. G. 141.) 
 
 (n) Eussell v. Cowley. [1835] 
 
 A patent claimed the invention of manufacturing tubes by 
 drawing them through rollers, using a mandrel in the course of 
 the operation. A later patent claimed the invention of manu- 
 facturing tubes by drawing them through fixed dies or holes, but 
 the specification was silent as to the use of the mandrel : — Held, 
 that the Court, taking the whole of the latter specification together, 
 would infer that the mandrel was not to be used, and that the 
 latter patent was good. (1 G. M. & B. 864; 1 Web. P. C. 463.) 
 Parke, B. : " In the construction of a patent, the Court is bound 
 to read the specification so as to support it, if it can fairly be done." 
 (1 Web. P. G. 470.) 
 
 .(o) Bickfoed v. Skewes. [1841] 
 
 The language of the specification ought not to be astutely 
 construed, so as to overthrow a patent. (1 Q. B. 950 ; 1 Weh. 
 P. G. 219.) 
 
 (ja) Neilsok «. Harfoed. [1841] 
 
 The construction of the specification is for the Court, the mean- 
 ing of the words and surrounding circumstances having been ascer- 
 tained by the jury. Parke, B., delivering the judgment of the 
 Court of Exchequer, held it a just rule of construction, to judge of 
 the meaning of a particular phrase by taking the whole instrument 
 together ; and he construed the word " effect " in one part of the 
 
462 SPECIFICATION : 
 
 specification as meaning beneficial efiieot, because it was evidently 
 used in that sense in some other parts of the specification. (1 Web. 
 P. a 372.) 
 
 (q) Gibson v. Branb. [1842] 
 
 A patent was obtained for a new and improved process or manu- 
 facture of silk, and silk in combination with certain other fibrous 
 substances. By the specification, the inventors declared the nature 
 of the invention to consist of eight several and distinct parts or 
 heads, the sixth being " the application of an improved process to 
 the throstle machine, on the principle of the long-ratch, for the 
 new and useful purpose of spinning silk waste ; " and the seventh, 
 " certain improvements effected by them in the throstle machine, 
 by which the utility in spinning silk waste was greatly augmented." 
 After describing the old process of converting silk waste into yarn, 
 the specification proceeded to describe the novel process by which 
 the plaintiffs produced their new or improved manufacture ; and 
 concluded thus : — " We desire it to be understood that we disclaim 
 those parts of the process, or mechanism, which were, or may have 
 been, previous to the granting of our patent, well known or in 
 use for the same purposes ; but we restrict our claims to the 
 eight several heads of invention mentioned in the early part of 
 the specification, all of which we believe to be new, and of great 
 public utility : " — Seld, that this was a claim, either of a new 
 invention, or a new combination of parts of the throstle machine ; 
 and the jury having found " that the invention was not new, but 
 an improved process, not a new combination," that the patent 
 could not be supported. (4 Seott, N. B. 8U ; i M. d 6. llS ; 
 1 Web P. a 631.) 
 
 (r) Macnamaea v. Hulse. N. P. [1842] 
 
 Action for the infringement of a patent for " certain improve- 
 ments in paving, pitching, or covering streets, roads, and other 
 ways." The patentee, in his specification, said : " My invention 
 consists in an improved mode of cutting or forming -stone, or other 
 suitable material, for paving or covering roads." The infringe- 
 ment complained of was the manufacture of wooden blocks 
 according to the improvement of the plaintifi'. Abinger, C.B., 
 said : " I think that the words ' any other suitable material ' 
 include a wood pavement, though probably the plaintiff never 
 contemplated it." (Car. & Marsh. 4:11 ; 2 Web. P. C. 129.) 
 
 (s) The Househill Company v. Neilson. [1843] 
 
 The letters patent and. specification constitute one instiument, 
 and are to be interpreted according to the ordinary sense of the 
 terms. (1 Web. P. G. 679.) 
 
 (t) MuNTZ V. Foster. N. P. [1844] 
 
 Action for the infringement of a patent for "an improved 
 manufacture of metal plates for sheathing the bottoms of ships and 
 other such vessels." The patentee, in his specification, said : " I 
 
Construction. 463 
 
 taTfe that quality of copper known in the trade by the appellation 
 of ' best selected copper,' and that quality of zinc known in 
 England as ' foreign zinc' " Tindal, C. J., in summing up to the 
 jury, said : " You have had evidence before yon that ' best selected 
 copper ' is the very purest that can be had. What I understand, 
 therefore, when he says, ' I take that quality of copper known in 
 the trade by the appellation of " best selected copper," ' he takes it 
 of that degree of purity of which the best selected copper wag 
 known at the time to consist. He adds also, ' and that quality of zinc 
 known in England as foreign zinc' I do not understand him to 
 mean it should be made of foreign zinc alone, but of zinc of that 
 quality wherever it was made." (2 Web. P. C. 104.) 
 
 (m) Elliott v. Ttjenee Ex. Ch. [1845] 
 
 The specification described the invention to consist in the 
 application to the covering of buttons, of such figured woven 
 fabrics " wherein the ground, or the face of the ground thereof, is 
 produced by a warp of soft or organzine silk, such as is used in 
 weaving satin and the classes of fabrics produced therefrom." 
 The jury asked how they were to understand the word "or " in 
 the specification ; whether it was used disjunctively, or whether 
 " organzine " was the construction of the word " soft." The 
 judge told them, that, in his opinion, unless the silk was organzine, 
 it was not within the patent : — Held, that this direction was 
 erroneous; for that the judge should not have told the jury, 
 absolutely, that soft and organzine silk were the same, but that 
 the words were capable of being so construed, if the jury were 
 satisfied that, at the date of the patent, there was only one 
 description of soft silk, — and that organzine, — used in satin 
 weaving ; but, otherwise, that the proper and ordinary sense of 
 the woBcl " or " was to be adopted, and the patent held to apply to 
 every species of soft silk, as well as to organzine silk. (2 G. B. 
 446 ; 16 L. J., G. P. 49.) 
 
 Words of a specification are to be construed according to their 
 ordinary meaning, unless it be shown by something in the context 
 (which may be explained by evidence) that a different construc- 
 tion ought to be adopted. (J6.) 
 
 (6) M'Alpine v. Mangnall. [1846] 
 
 Patent for "improvements in machinery or apparatus for 
 stretching, drying, and finishing woven fabrics." The specifi- 
 cation, after explaining the mode of conducting the operation, 
 continues: — "We are perfectly aware that many simple contriv- 
 ances might be devised for effecting the object of our improve- 
 ments, viz. giving vibrating motion to the selvages of the cloth, 
 for the purposes above stated; but as it is not practicable to 
 describe every possible method in detail, we desire it to be under- 
 stood that any mode even of moving one side or selvage of the 
 cloth whilst the other remains stationary, we shall consider to be an 
 evasive imitation of our invention, if for the purpose of drawing 
 the threads into diagonal positions by mechanical means instead 
 
464 SPECIFICATION : 
 
 of manual labour : " — Seld, tliat the patentee claimed, not the 
 whole machine, but only those improvements which gave the 
 vibrating motion to the fabric while in the course of drying. 
 (3 a B. 496 ; 16 L. J., 0. P. 298.) 
 
 (le) Baebee v. G-eace. [1847] 
 
 The specification of a patent for " improvements in the process 
 of finishing hosiery, and other goods manufactured from lamb's- 
 wool, &c.," stated the invention to consist in submitting hosiery, 
 and other similar goods, to the finishing process of a press heated 
 by steam, &c., in the manner hereinafter mentioned. A description 
 was then given, by letters, of a drawing which represented a 
 press, which consisted of a box heated by steam, up to which 
 another bos similarly heated was to be pressed by means of 
 hydraulic pressure, or by screws or other well-known means. 
 After describing the method of pressing the goods between these 
 hot boxes, the specification concluded by confining the inventor's 
 claim to the submitting hosiery and similar goods to the pressure 
 of hot boxes or surfaces heated by steam as above described : — 
 Held, that the specification did not claim a general mode of 
 applying hot surfaces to fabrics, but that it was merely for the 
 particular machine described in the specification, and that a 
 method of finishing hosiery goods, by passing them through 
 heated rollers, was not included in the patent. (1 ExcJi. 339 ; 17 
 L. J., Exch. 122.) Pollock, C.B., said : "Were the Court to hold 
 that rollers are included in this patent, the efiect of it would be, 
 that if the party could have kept his process a secret in point of 
 fact, and have given the public nothing but what they could 
 gather from the specification, he might have had the exclusive 
 use of rollers under the protection of the law for fourteen years, 
 and at the end of that period the piiblic would be wholly ignorant 
 that rollers were capable of being used, and had been used, for 
 such a process, or that they were the object of the patent." 
 (1 Exch. 344.) 
 
 {y) Stevens v. Keating. Exch. [1848] 
 
 Patent for " a process or method of combining various materials 
 so as to form stuccoes, plasters, and cements, and for the manufac- 
 ture of artificial stones, marbles, &c., used in buildings." The 
 specification described the process of making a cement from 
 gypsum to consist in mixing with powdered gypsum, strong 
 alkali (ex. gr. best American pearl-ash) dissolved in a certain 
 proportion of water ; this solution to be neutralized with acid 
 (sulphuric acid being the best), the mass to be kept in agitation, 
 and the acid to be added gradually till the effervescence should 
 cease; and then a certain proportion of water to be added (if 
 other alkali were used, the quantity to be varied in proportion to 
 its strength) ; and the mixture having been brought to a proper 
 consistence by the further addition of powdered gypsum, to be 
 dried in moulds, and finally subjected to a furnace capable of 
 producing a red heat. The specification concluded by stating 
 
Construction. 465 
 
 that other alkalies and adds heside those before mentioned would 
 answer the purposes of the invention, though not so well, and 
 that the inventor claimed the method or process thereinbefore 
 described : — Held, that the specification was bad. " It must either 
 be a claim of all acids and alkalies, or of all acids and alkalies 
 that will answer the purpose. If it be a claim of all acids 
 and alkalies, it is clearly bad, as there are some which will not 
 answer the purpose. If it be a claim of those only which will 
 answer the purpose, it is as clearly bad, in consequence of not 
 stating those which will answer the purpose, and distinguishing 
 them from those which will not, and so preventing the public 
 from being under the necessity of making experiments to ascertain 
 which of them will succeed and which will not." (2 Exch. 772 ; 
 19 i. J., Ex. 57.) 
 
 At Nisi Prius Pollock, O.B., said : " Some observations have been 
 made at the bar on the subject of patents and specifications, and the 
 diiferent rules of construction that have been maintained at different 
 periods. I take the rule to be, that you are not to intend anything in 
 favour of a specification or patent, and certainly not to intend any- 
 thing against it ; you are to deal with it just as you find it ; yor. are 
 to put the true and right and fair construction upon every allega- 
 tion and every fact connected with it, and you are to find what is 
 the true and fair and just result. You are not to lean in favour 
 of the public against the patent, which it is to be regretted was 
 many years ago ratlier the fashion of the courts of justice, under 
 the notion that it was a monopoly, that all monopolies were 
 odious, and that, therefore, you were to intend everything 
 against them ; although, on the other hand, in modern times,. 
 it is said the leaning is the other way, I do not think there 
 ought to be any leaning one way or the other." (2 Weh.- 
 P. C. 187.) 
 
 (a) Beaed v. Egerton. [1849] 
 
 A specification of a patent for " a new and improved method of 
 obtaining the spontaneous reproduction of all the images received 
 on the focus of the camera obscura," in describing the process, 
 stated : It is to be divided into five operations. The first consists 
 in polishing and cleaning the silver surface of the plate, in order 
 to properly prepare or qualify it for receiving the sensitive layer 
 or coating (iodine), upon which the action of the light traces the 
 design ; the second oiieration in the applying that sensitive layer 
 or coating to the silver surface ; the third, in submitting, in the 
 camera obscura, the prepared surface or plate to the action of light, 
 so that it may receive the images. The description of the first 
 operation — preparing the silver surface of the plate — directed that 
 nitric acid dissolved in water should be applied three different 
 times, the plate being each time sprinkled with pounce, and lightly 
 rubbed with cotton ; adding, " When the plate is not intended for 
 immediate use or operation, the acid may be used only twice upon 
 its surface after being exposed to heat ; the first part of the opera- 
 tion, that is, the preparation as far as the second application of the 
 
 2 H 
 
466 SPECIFICATION: 
 
 acid, may be done at any time ; this will allow of a number of 
 plates being kept prepared up to the last slight operation ; it is, 
 however, considered indispensable, that, just before the moment of 
 using the plates in the camera, or the reproducing the design, to 
 put at least once more some acid on the plate, and to rub it lightly 
 with pounce, as before stated ; finally, the plate must be cleaned with 
 ■cotton from all pounce dust which may be on the surface, or its 
 edges." In a subsequent part of the specification, having described 
 the second operation, viz., the application of the iodine, the inventor 
 observed : " After this second operation is completed, the plate i» 
 to be passed to the third operation, or that of the camera obscura ; 
 whenever it is possible, the one operation should immediately 
 follow the other : " — Hdd, that, taking the whole specification 
 together, the direction as to the third application of acid was not 
 to be understood to be a direction to apply the acid after the 
 second operation, viz., the coating the plate with iodine, — ^which, 
 it was proved, would render the whole process abortive, — but to 
 apply it as part of the first operation ; and that the specification 
 gave sufficient information to an operator of reasonable skill, and 
 was therefore sufficient. (8 G. B. 165.j 13 Jut. 1004; 19 i. j:, 
 C. P. 36.) 
 
 (a) Sellers v. Dickinson. [1850] 
 
 Pollock, C.J. : " The s.peoificatioii should be met with candour 
 and indulgence." (5 Ex. 324.) Eolfe, B. : " The Court should 
 read a specification as a person of ordinary understanding would 
 do, not loosely conjecturing anything, but, at the same time, not 
 scanning it as if it were a special plea." {lb. 326.) 
 
 (Z>) The Electric Telegraph Company e. Brett. [1851] 
 
 Patent " for improvements in giving signals and mounding 
 alarums in distant places, by means of electric currents transmitted 
 through metallic circuits." Subsequently to the patent, it was dis-' 
 covered that the return current could be conducted back to the 
 battery through the earth as efiiectually as through a continuous' 
 metallic circuit. The defendant contended that, by using this 
 method, they did not infringe the plaintiff's patent. Cresswell, J., 
 delivering the judgment of the Court of Common Pleas, said : 
 " With respect to the specification, it is to be observed, that the 
 claim of the patentees being for improvements not all immediately' 
 connected with, or dependent on, each other, but all applicable to 
 giving signals, &c., by means of electric currents, the plan adopted 
 in the specification, was, to give an account of the whole system or 
 mode of transmission of electric currents for the purpose of giving 
 signals, and the modes of giving those signals, specifying afterwards 
 those parts claimed as improvements, and either expressly disclaim- 
 ing, or leaving unclaimed, all that was not expressly claimed. It is 
 obvious, that in such a specification, that part which describes the 
 matter claimed, is to be much more strictly construed than that 
 which, though necessarily mentioned, is not spoken of as a new 
 matter, or as the subject of a grant, but only as something known. 
 
Construction. 467 
 
 3nd necessary to be referred to for the purpose of explaining the 
 fllaim. Considered in this view, we think the specification, in 
 speaking of metallic circuits, may properly be considered as com- 
 prehending all circuits which are metallic, as far as it is material 
 to the improvements claimed that they should be so ; and that the 
 expression in question is not to be construed with more strictness 
 and precision than is necessary to enable it to fulfil that purpose 
 of explanation for which it was introduced." (10 Com. B. 880.) 
 " It appears to us reasonable to hold that a claim for a patent 
 for improvements in the mode of doing something by a known 
 process, is sufficient to entitle the claimant to a patent for his 
 improvements, when applied either to the process as known at the 
 time of the claim, or to the same process altered and improved by 
 discoveries not known at the time of the claim, so long as it remains 
 identical with regard to improvements claimed, and their appli- 
 cation." (16. 881.) 
 
 (c) Newton v. Vauchee. [1861] 
 
 Specifications are to be read in connection with their titles. 
 (6 Exch. 864.) 
 
 (i) Holmes v. The London and North "Western Eailway Company. 
 [1852]. 
 
 The plaintiff obtained a patent for " an improved turning* 
 table," all the component parts of which, except one, were com- 
 prised in a prior patent, the specification of which was not enrolled 
 until after the date of the plaintiff 's patent. The plaintiff, in his 
 specification, claimed " the improved turning-table hereinbefore 
 described," without showing that any part of it was old. The 
 jury found, that the introduction of certain suspending rods made 
 the table a new instrument. Jervis, C.J., in delivering judgment, 
 said : " The claim in substance is this — ' for an improved turning- 
 table.' Now, that will not have the effect of making everything 
 that follows a combination, merely because he claims the turning- 
 table." (Macr. P. G. 27.) Maule, J., after pointing out that the 
 patentee had not distinguished what was new from what was old, 
 said : " If it be impliedly said in the specification, that the sus- 
 pension rods are new, and an improvement on what existed before, 
 the same implication arises as to every other part." (Ih. 29.) 
 
 (e) Tetley v. Easton. N. P. [1852] 
 
 Pollock, C.B. ; Specifications are to be construed in a candid 
 and fair spirit, and if any mistake in one part can be corrected by 
 other parts of the specification, such correction should be made. 
 (Macr. P. C. 74.) 
 
 (/) Hastings v. Brown. [1853] 
 
 A specification in a patent, for a particular construction of 
 windlasses, stated that the object was " to hold, without slipping, 
 a chain cable of any size." Before the date of the patent, con- 
 
 2 H 2 
 
468 SPECIFICATION: 
 
 Btmctions were known by which a windlass might be made to 
 hold a single chain cable of any assigned size : — Held, that the 
 specification did not unequivocally show, that the object was to 
 construct a single windlass which might hold diiferent chain 
 cables, whatever their size, and that such a windlass was, therefore, 
 not protected by the patent. (1 K & B. 450 ; 22 L. J., Q. B. 161 ; 
 17 Jur. 647.) 
 
 ((/) Palmee v. Wagstaef. [1854] 
 
 Pollock, C.B. : " A patent or specification should be construed 
 in the sense which the patentee intended, and if any expressions 
 are ambiguous, we should endeavour to give effect to the intention ; 
 and, moreover, I think that every patent should be expounded 
 favourably to the patentee. But we ought not to violate the 
 obvious meaning of the language, unless it is quite clear that the 
 patentee intended something different from that which the expres- 
 sions indicate." (9 Exch. 501.) 
 
 (Ji) Unwin v. Heath. H. L. [1855] 
 
 Crompton, J. : "I think that it would be a narrow and danger- 
 ous construction to limit the invention, claimed in express words, 
 by the mode and process of working which the plaintiff sets forth, 
 as a means of carrying his invention into effect." (25 L. J., 
 a p. 12.) 
 
 (i) BoviLL V. Pimm. [1856] 
 
 The construction of a specification is a question of law when 
 the facts are not disputed. (11 Exch. 740.) 
 
 (_;■) Hills v. London Gas Light Company. [1857] 
 
 • Though the construction of a patent or specification is ordinarily 
 for the judge, yet where a specification mentioned " the precipi- 
 tated or hydrated oxides of iron," and there was (on the issue of 
 novelty) a prior patent proved, the specification of which men- 
 tioned carbonate of iron, and the scientific evidence showed that 
 real carbonate of iron was difficult to be preserved, that it was not 
 commonly sold in the shops (though it existed as a chemical 
 Substance), and what was sold for it would be, in fact, a hydrate, 
 through absorption, but that carbonate would not be understood 
 chemically as meaning hydrate ; the judge, having ruled that the 
 specification was to be construed commercially not scientifically, 
 that carbonate commercially meant the '' hydrate," and that, on 
 the issue of novelty, the plaintiff must be nonsuited, the Court, 
 after great doubt, set aside the nonsuit, and granted a new trial. 
 (27 L. J., Exch. 60.) See same case, infra, 469 (J). 
 
 (7c) Thomas r. ToxwELL. Ex. Ch. [1859] 
 
 The patentee of a sewing machine in his specification, claimed 
 " the application of a shuttle in combination with a needle, as 
 shown in sheet 1, for forming and sewing loops of thread or other 
 
ConstriwHon. 469 
 
 substance, for tlie purpose of producing stitches either to unite or 
 ornament fabrics, whatever may be the means employed for 
 working such shuttle and needle when employed together." By a 
 disclaimer he stated, " I do not claim the use in a machine of 
 several needles and shuttles, nor do I claim any of the mechanical 
 parts separately of which the machinery shown in the drawing is 
 composed ; " — Seld (affirming the judgment of the Court of Queen's 
 Bench (5 Jur., JV. S. 37)), that the claim was not confined to the 
 single application of a shuttle in combination with a needle, as 
 shown in sheet 1, but extended generally to the application of a 
 shuttle with a needle, for attaining the object therein stated. 
 (6 Jur., N. S. 271.) 
 
 (Z) Hills v. The London G-as Light Company. [1860] 
 
 In a patent for an improved mode of manufacturing gas, the 
 plaintiff claimed a mode of purifying gas by means of " hydrated 
 or precipitated oxide of iron : "■ — Held, that this included only 
 precipitated hydrates. (5 H. & N. 312; 29 L. J., Ex. 409.) 
 Bramwell, B. : " It appears to us, upon looking at the specification, 
 that the plaintiff uses those equivalent expressions, because he 
 says, ' hydrated or precipitated,' and that oxide of iron may be 
 conveniently prepared for these purposes, and so on ; and therefore 
 it is obvious that when he uses that word hydrated, he uses it as 
 synonymous with precipitated ; and consequently, when he speaks 
 of using hydrated or precipitated oxides, he means such hydrated 
 oxides as are precipitated." (5 H. & N. 368 ; 29 L. J., Ex. 424.) 
 
 (m) OXLET V. HOLDEN. [1860] 
 
 Patent for " certain improvements in the doors and sashes of 
 carriages." One part of the invention consisted of a metal plate, 
 with a slot and a stud or pin working in a groove on each side of 
 the sash or frame ; and the patentee claimed " the metal fittings 
 and the mode of applying the same, described herein as the second 
 part of my invention," The description of the metal fittings was 
 inseparably interwoven, throughout the specification, with the 
 mode of applying them ; — Held, that this was a claim, not for the 
 metal fittings themselves, but for the mode of applying them, and 
 Consequently, that the patent was sustained by proof that the 
 application was new, though the stad and plates themselves were 
 old. (8 G. jB., N. S. 666 ; 30 L. J., G. P. 68 ; 8 W. B. 626 ; 
 2 L. T. Bep., N. S. 464.) 
 
 (w) Seed «. Higgins. H. L. [1860] 
 
 Lord Campbell, L.C. : " Where novelty or infringement depend 
 merely on the construction of the specification, it is a pure question 
 of law for the judge ; but where the consideration arises how far 
 one machine, or a material part of one machine, imitates or re- 
 sembles another in that which is the alleged invention, it gene- 
 rally becomes a mixed question of law and fact which must be left 
 to the jury." (8 H. L. Gas. 561.) 
 
470 SPECIFICATION: 
 
 (o) Betts h. Menzies. H. L. [1862] ' 
 
 Blackburn, J., said : " I agree with wliat was said by Mn 
 Justice Crompton, in the Conrt below, that if the general claim to 
 the use of an invention were out down and limited to the use of 
 the invention in the particular way pointed out by reason of the 
 words ' as herein described,' it would be a narrow rule of construc- 
 tion, generally working to the detriment of patentees ; and, what 
 weighs more with me, generally giving an effect to specifications 
 different from what the persons drawing them intended, or those 
 reading them understand." (10 H. L. Cos. 140.) 
 
 (p) Hills v. Evans. Ch. [1862] 
 
 The construction of a specification, as the construction of all 
 other written instruments, belongs to the Court ; but the explana- 
 tion of the words or technical terms of art, the phrases used in 
 commerce, and the proof and results of the processes which are 
 described (and in a chemical patent the ascertainment of chemical 
 equivalents) are matters of fact upon which evidence may be given, 
 contradictory testimony may be adduced, and upon which it is the 
 province and right of a jury to decide. But when those portions 
 of a specification are made the subject of evidence, the direction to 
 be given to the jury with regard to the construction of the rest of 
 the patent, which is conceived in ordinary language, must be a 
 direction upon the hypothesis of the jury arriving at a certain 
 conclusion with regard to the meaning of those terms, the signifi- 
 cation of those phrases, the truth of those processes, and the result 
 of the technical procedure described in the specification. (31 L. 
 J., Ch. 457 ; 8 Jur., N. S. 525.) 
 
 (q) MacKelcan v. Eennie. [1862] 
 
 In construing a specification, it is not competent to the in- 
 ventor to pray in aid the provisional specification, in order to 
 explain or enlarge the meaning of the complete specification. (13 
 a B., N. S. 62.) 
 
 (s) Ealston v. Smith. H. L. [1866] 
 
 E., in his specification, described his patent for improvements in 
 embossing and finishing woven fabrics, as enabling him, upon a 
 roller, either spirally or longitudinally, or in a circular form, to 
 groove, or flute, or engrave, or mill, or otherwise indent any design. 
 The fact was, that if the design was engraved longitudinally it 
 would destroy the material. E. therefore, in a disclaimer, altered 
 " upon " into " around the roller :" — Held, that the construction of 
 the specification, as amended by the disclaimer, excluded spiral 
 engraving, and confined it to circular engraving or grooves. (11 
 E. L. Cos. 223; 35 L. J., C. P. 49; 13 L. T. Sep., N.S.I; 20 0. 
 B., N. S. 28.) 
 
 (*) Thomas v. "Welch. [1866] 
 
 A specification, to which drawings were attached, after describing 
 an instrument marked " g," continued, " It is the arranging an 
 
Construction. All 
 
 instrument * g,' as herein described, wticli, while it is the means of 
 holding the fabric ... is also the means by which the step-by- 
 step movement is given to the fabric, which constitutes the pecu- 
 liarity of my invention -."—Held, that this was not a claim of all 
 instruments which were at once the means of holding and moving 
 the fabric : nor, on the other hand, of the exact machine, with all 
 its arrangements, contained in the drawings ; but a claim to the 
 exclusive right to use " g," or any similar instrument, for the pur- 
 pose of holding and moving the fabric at the same time. (L. B.. 
 1 G. P. 192.) 
 
 (u) Simpson v. Holliday. [1864-66] 
 
 A patentee, in his specification of a patent for preparing red and 
 purple dyes, said : " I mix aniline with dry arsenic acid," &c. At 
 the date of the patent an arsenic acid entirely free from water was 
 known to chemists as anhydrous arsenic acid, but could not be 
 commonly bought in the trade. This would not produce the dyes. 
 A hydrated acid, containing from 12 to 14 per cent, of water was 
 commonly sold by manufacturers, which was dry to the touch, and 
 known in the trade as "dry arsenic acid." This would produce 
 the dyes. Wood, V.-C, found, on the ground that the specification 
 was addressed to manufacturers, and not to scientific chemists, that 
 " dry arsenic acid " meant dry hydrated arsenic acid. (20 Newt. 
 Lon. Jour., N. S. 118.) 
 
 In the House of Lords Lord Westbury, L.C., hearing the case on 
 appeal from Wood, V.-C, in the course of his judgment, said : " With 
 respect to the rules that govern the construction of specifications, 
 they are the ordinary rules for the interpretation of written instru- 
 ments, having regard especially to the fact that the specification must 
 clearly fulfil the obligation imposed on the patentee by the proviso 
 contained in all letters patent, viz., that the grant shall be void if the 
 patentee shall not particularly describe and ascertain the nature of 
 his invention, and in what manner the same is to be performed. It 
 is, therefore, made a settled rule, that the specification must be so 
 expressed as to be perfectly intelligible to a workman of ordinary 
 knowledge, and it must follow, that if there be any obscurity or 
 ambiguity in the specification which is lilcely to mislead, this defect 
 ought not to be helped by any refined or secondary interpretation 
 of the language. It was contended before me, and the Vice- 
 Chancellor is reported to have said, that it has been settled by 
 authority that the most liberal construction is to be given to the 
 patent that will sustain it, especially in those cases where the 
 Court is satisfied that the invention is really new and useful. 
 (20 Newt. Lon: Jour., N. S. 107.) When it is stated that an error in 
 a specification, which any workman of ordinary skill and experience 
 would perceive and correct, will not vitiate a patent, it must be 
 understood of errois which appear on the face of the specification, 
 or the drawings it refers to ; or which would be at once discovered 
 and corrected in following out the instructions given for any process 
 or manufacture; and the reason is, because such errors cannot 
 possibly mislead. But the proposition is not a correct statement of 
 
472 SPECIFICATION : 
 
 the law, if applied to errors wiiioli are discoverable only by experi^ 
 ment and further inquiry. Neither is tbe proposition true of an 
 erroneous statement in a specification amounting to a false sugges- 
 tion, even though the error would be at once observed by a work- 
 man possessed of ordinary knowledge of the subject. ... If the 
 words, ' the most liberal construction ' are intended to denote some 
 principle of interpretation different from the ordinary rules for the 
 construction of written instruments, I am not aware of any such 
 authority." (13 W. B. 578 ; 12 L. T. Bep., N. S. 99.) 
 
 (y) JOEDAST V. MOOEE. [1866] 
 
 A. obtained a patent for " certain improvements in the construc- 
 tion of ships and other ves.sels navigating on water." By his speci- 
 fication the patentee claimed as his invention, amongst others, (1) 
 the construction of ships " with an iron frame, combined with an 
 external covering of timber planking for the sides, bilges and bot- 
 toms ; (6) the construction of iron frames adapted to an external 
 covering of timber for the sides, bilges and bottoms, as described :" 
 — Held, that the expression " iron frame " in the first claim, was not 
 confined to an iron frame, such as that specified in the sixth claim, 
 but comprehended whatever might, according to the ordinary use 
 of language, be called " an iron frame," and that, as there had 
 existed ships with iron framings similar to that which the plaintiff 
 claimed, the claim was too large. (L. Bep., 1 G. P. 624 ; 35 L. J., 
 G. P. 268.) 
 
 (w) Weight v. Hitchcock. [1870] 
 
 A patent was taken out for " improvements in the manufacture 
 of frills or ruffles, and in the machinery or apparatus employed 
 therein." The specification described a process of plaiting tiabrics 
 by means of a reciprocating knife in combination with a sewing 
 machine. The first claim was for the general construction, arrange- 
 ment and combination of machinery for producing plaited frills or 
 trimmings in a sewing machine ; the second was for the application 
 and use of a reciprocating knife for crimping fabrics in a sewing 
 machine ; and the third, for the peculiar manufacture of crimped or 
 plaited frills or trimmings " as hereinbefore described," and illus- 
 trated by a drawing : — Held, first, that the patent was not for the 
 manufactured pioduct, but for the process of manufacturing it; 
 secondly, that the patent was not limited to the manufacture of 
 plaited fabrics by the knife in combination with a sewing machine. 
 {L. Bep., 5 Ex. 37 ; 39 L. J., Ex. 97.) 
 
 (x) Neilson v. Betts. H. L. [1871] 
 
 After a patent has stood inquiry and the test of time, courts do 
 not encourage verbal objections to the form of the specification. 
 (L. Sep., 6 S. L. Gas. 1 ; 40 L. J., Ch. 317 ; 19 W. B. 1121.) 
 
 (a;*) Newton v. Halbaed. [1872] 
 
 Grove, J. : "A specification should not be construed in a 
 technical or captious spirit, but with a fair intention to give it 
 effect if it be reasonably intelligible." (John, 152.) 
 
Construction. 473 
 
 (y) HiNKS V. Safety Lightinct Company. [1876] 
 
 Patentees of lamp-burners claimed hj their specification as their 
 invention the constriiction of burners " in the manner described 
 and illustrated in the figures, that is to say, the employment in the 
 same burner of two or more flat or curved wick-cases or holders in 
 which two or more flat wicks are placed, so as to produce thereby 
 one or more flat flames, or elliptical or nearly circular flames." The 
 figures referred to showed burners with two wicks passing through 
 a double-slotted cone. The use of two wicks with a single-slotted 
 cone was old : — Held, that the claim could not be read as limited to 
 burners with a double-slotted cone, and that the patent was bad for 
 want of novelty. (4 Ch. B. 607.) 
 
 Jessel, M.E. : " I am anxious, as 1 believe every judge is who 
 knows anything of patent law, to support honest, bond fide inven- 
 tors who have actually invented something novel and useful, and 
 to prevent their patents from being overturned on mere technical 
 objections, or on mere cavillings with the language of their specifi- 
 cations, so as to deprive the inventor of the benefit of his inven- 
 tion. This is sometimes called a ' benevolent ' mode of construc- 
 tion. Perhaps that is not the best term to use, but it may be 
 described as construing a specification fairly, with a judicial 
 anxiety to support a really useful invention if it can be supported 
 on a reasonable construction of the patent. Beyond that the 
 ' benevolent ' mode of construction does not go." (Ih. 612.) 
 
 (z) Harrison v. Anderston Foundry Company. H. L. [1876] 
 
 Lord Chelmsford : " In the construction of a specification, it 
 appears to me that it ought not to be subjected to what has been 
 called a benign interpretation or to a strict one. The language 
 should be construed according to its ordinary meaning — ^the under- 
 standing of technical words being, of course, confined to those who 
 are conversant with the subject-matter of the invention — and if 
 the specification is thus sufficiently intelligible, it performs all that 
 is required of it." (L. B., 1 A^p. Gas. 581.) 
 
 (a) DuDSEON V. Thompson. H. L. [1877] 
 
 Lord Blackburn : " The duty of the Court is fairly and truly to 
 construe the specification, neither favouring the one side nor the 
 other — neither putting an unfair gloss or construction upon the 
 specification for the purpose of saving the patent if it is said that 
 the patent is void, nor putting an unfair gloss or construction upon 
 it in order to extend the patent and make it take in something 
 which you may think was an unhandsome taking of the fruits of 
 his invention from the patentee, if it is not really an infringement 
 of the patent." (i. B., 3 App. Gas. 63.) 
 
 (&) Plimpton v. Spillee. M. E. [1877] 
 
 Jessel, M.E., in delivering judgment, said : " It is the duty oi 
 the judge to construe a specification fairly, with a judicial anxiety 
 
474 SPECIFICATION : 
 
 to support a really usfeful invention, if it can be supported upon A 
 reasonable interpretation of the patent ; or, as Mr. Aston said, that 
 a judge is not to be astute to find flaws in small matters in a specifi- 
 cation, witb a view to overthrow it When we come to read 
 
 the claim, I think it is fair to say that, if it can be read in two 
 ways, one claiming something that has a merit of novelty, and the 
 other claiming something which would show the man to be ignorant 
 of all the ordinary appliances used in every workshop in the world, 
 it is the duty of the judge to adopt the construction which makes 
 the patent reasonable and sensible, rather than that construction 
 which makes the patent utterly absurd." (6 Ch. D. 422.) 
 James, L.J. : '' You must always construe a claim with reference 
 to the whole context of a specification." (lb. 427.) 
 
 (c) Claek v. Adie (Second App.). H. L. [1877] 
 
 Adie obtained a patent for " improvements " in a horse-clipping 
 machine, and granted to Clark a licence to manufacture machines 
 in accordance with the patent. The improvements described in 
 Adie's specification comprised, among other items, the. parallelism 
 of the teeth of the comb, and the addition of an extra comb-plate 
 when required, so as to regulate the length to which the hair might be 
 clipped. Clark manufactured clippers not having parallel teeth nor 
 an extra comb-plate, but, in other respects, similar to those patented 
 by Adie, and resisted payment of the royalties under the licence in 
 respect of these clippers, on the ground that the remaining items 
 were old, and that the specification must be so construed as to 
 exclude these items from the claim : — Seld, that upon the natural 
 construction of the specification it included a claim, not only in 
 respect of the parallel teeth and extra comb-plate, but also in respect 
 of the other matters, and that, as the specification was not ambiguous 
 or doubtful, prior specifications were not of any weight to control 
 its construction. The word " parallel " was construed in its 
 popular and not in its mathematical sense. (2 App. Gas. 423.) 
 ^ Lord Cairns, L.O., said : " A point was raised in the course of 
 the argument, as to whether certain evidence ought or ought not 
 to be admitted in this case. That evidence was of this kind : 
 there had been previous patents granted to different persons, for 
 the purpose of making horse-clippers of various kinds, and the 
 present patent being a patent for ' improvements in the machinery 
 for clipping horses,' it was said that those prior patents ought to be 
 admitted in evidence for the purpose of showing the state of the 
 manufacture before the present patent was granted, and that, they 
 being so admitted, your lordships would find in them descriptions 
 of the machine which were identical, or all but identical, as to the 
 formation of the teeth, with the machine which the appellant, the 
 licensee, was using. And then it was said, if that is so, the present 
 patent claiming machinery which would be covered by former 
 patents, would be invalid, and you ought to put upon this speci- 
 fication the construction, if it is possible to do so, which would 
 deliver it from the peril of being held invalid by reason of the prior 
 specifications I do not think it will be necessary for your 
 
ConstnuiUon. 475 
 
 lordsMps to lay down any precise rule as to the reception or th.e 
 
 rejection of evidence in this case It was said that if the 
 
 specification before the House was ambiguous or doubtful, a con- 
 struction might be put upon it which would save this specification 
 from invalidity by reason of prior publication. My lords, it is 
 unnecessary to consider that argument, for the specification appears 
 to me not to be doubtful or ambiguous." (lb. 430.) 
 
 Lord Blackburn : " In construing the specification, we must 
 construe it like all written documents, taking the words and seeing 
 what is the meaning of those words when applied to the subject- 
 matter ; and in the case of a specification, which is addressed not 
 to the world at large but to a particular class, for instance, skilled 
 mechanicians, possessing a certain amount of knowledge, it is 
 material for the tribunal to put itself in the position of such a 
 class, namely, skilled mechanicians, and to see what the words of 
 the specification mean when applied to such a subject as skilled 
 mechanicians would know, and as the tribunal has now, by the 
 admission of evidence or otherwise, put itself in a position to under- 
 stand, and then to say what the words of the specification mean 
 when applied to such a subject-matter. For that purpose I am not 
 at all prepared to say that the other patents and specification's 
 V70uld not in the present case be admissible evidence, as having 
 more or less weight (in this case I think they would have but little 
 weight) or value as putting the Courts in the position of knowing 
 what was the subject-matter they were dealing with, and what the 
 words meant, and whether they had a different construction from 
 what they would have if construed without that knowledge. But 
 when it is attempted, as it certainly was in argument before us, to 
 say that inasmuch as these specifications show, or are alleged to 
 show, matters which, upon a fair construction of the specification 
 claimed by the patentee, were old at the time that the patent was 
 taken out, and were generally known to be old, therefore the speci- 
 fication must be so construed as not to include them ; that seems to 
 me to be both contrary, as far as I know, to the course of decision 
 and contrary to principle." (16. 436.) 
 
 The judgment of the Court of Appeal was delivered by James, L. J., 
 who said : " The admissibility was put on some expressions in the 
 judgment of the learned judges in the case of Trotman v. Wood (16 
 C. B., N. S., 479), relating to Trotman's anchors. They are only 
 dicta, because no such evidence was acted on in that case. It was 
 never meant by the learned judges, and it cannot be effectually 
 contended, that there is any principle to be applied to the con- 
 struction of specifications which differs from that applicable to the 
 construction of every written instrument whatever. Of course, in 
 ascertaining the meaning of words used, you endeavour to put 
 yourself as much as possible in the position of the person using 
 
 them You assume that a patentee would not be so absurd 
 
 as to claim that which he knew, and that which he knew everybody 
 else knew, to be old, and you would, if possible, avoid that 
 absurdity, if by any legitimate construction of the words used you 
 could do so." (3 Ch. D. 142.) 
 
476 SPECIFICATION : 
 
 (d) Wegmann v. Corcoran. C. A. [1879] 
 
 The plaintiff obtained a patent for " an improved machine or 
 apparatus for treating or preparing meal." The specification 
 described a machine by which meal was to be passed from hoppers 
 between wooden rollers, and then between a pair of rollers called 
 " squeezing rollers," and continued thus :— " The squeezing roUs 
 are to have a surface consisting of material containing so much 
 silica as not to colour the meal or flour. I prefer to make them 
 of iron, coated with china, and finely turned with diamond tools.'' 
 The patentee claimed, secondly, " the application of squeezing 
 rolls having a surface consisting of material containing so much 
 silica as not to colour the meal or flour, and so as to have the hard- 
 ness required for the purpose set forth." The invention was said 
 by the Court to consist in the use of squeezing rollers of a peculiar 
 material not in common use, and of a particular construction, 
 different from that of ordinary homogeneous rollers, and to be 
 applied under conditions directed to the effecting of novel results. 
 
 It was proved by evidence that china having the composition of 
 oriental china, which contains about 73 per cent, of silica, ceased 
 to be manufactured in this country, except in very small quantities, 
 at the end of last century, and was replaced by much softer china, 
 containing only about 40 per cent, of silica. No china softer than 
 oriental china was suitable for the fulfilment of the objects of the 
 patent. It was also necessary that the china should contain a due 
 proportion of alumina (about 23 per cent.), to correct the biittle- 
 ness due to the large quantity of silica. In practice the rollers 
 were constructed by placing a cylinder of such china round an 
 iron centre, with a bedding of sulphur between the iron and china. 
 
 The only other practicable method of construction was to leave 
 the cylinder hollow, being attached to an iron axis by flanges : — 
 Seld, that the specification was insuificient and misleading, inas- 
 much as— 
 
 (1) The term " china '' would include, if not primarily import, 
 
 the material manufactured under that name in this country 
 at the present time, and that would not answer the 
 purpose. 
 
 (2) The material particularly described is described by a generic 
 
 term, which comprises a variety of species, the large 
 majority of which would be unsuitable for the purpose 
 required. 
 
 (3) The expression "iron coated with china," would import 
 
 something like an enamelling with china, but a roller so 
 constructed would not answer the purpose. 
 
 (4) The material used not being the subject of manufacture in 
 
 this country, and the construction of the rollers novel, the 
 patentee ought to have described both with particularity, 
 but this was not done. 
 
 (5) Every step in the application of the invention, as specified, 
 
 would necessitate experiment. 
 (13 Ch. D. 65.) 
 
Construction. All 
 
 (e) Egberts v. Heywood. V.-C. H. [1879] 
 
 The inventor of a painting machine, by his final specification, 
 claimed the various parts of the machine, and, by his eighth claim, 
 " the shallow sliding-tray, T, arranged and used substantially in 
 the manner and for the purpose specified," being, in fact, an ordi- 
 nary moveable tray, used for catching the drippings of the paint 
 from the bmshes and other parts of the machine, and being a thing 
 commonly known and used before the date of the patent. He also 
 claimed the general constraction and combination of the several 
 parts of the machine : — Held, in an action for infringement, that the 
 patent was bad for want of novelty, inasmuch as it was impossible 
 to construe the claim for the sliding-tray otherwise than as a 
 distinct claim for a separate invention, and that the plaintiffs 
 .cause of action must fail on that ground. Hall, V.-C. : " Mr. Aston 
 put to me the test case of a purchaser of one of the machines not 
 having got the tray, and he might also have put the case of a 
 purchaser having got the tray, but it had become worn out or 
 broken ; then, if this patent were good, it would be impossible for 
 him to replace it without buying it from the plaintiff or infringing 
 the patent ; he would be precluded by the eighth claim. That 
 shows that the specification does claim the tray as a separate 
 invention and novelty." (27 W. B. 454.) 
 
 (f) Westinghouse v. Lancashire and Torkshire Eailway Company. 
 
 [1882-4] 
 
 Grove, J. : " Practically ' substantially as herein described ' 
 come to nothing ; . . . . they do not alter the law or carry it a step 
 further because the patentee, when he claims his invention, claims 
 in connection with the draw^ings, and when he describes the nature 
 of his invention, any person who substantially adopts that invention 
 as claimed by him infringes his patent, and not a bit the more or 
 the less because the patentee puts in the word substantially." 
 lOriff. 244 ; 10. B. 98, 229 at p. 241.) 
 
 (/*) Cropper v. Smith and Hancock. C. A. [1884] 
 
 The idea that a benignant construction was one that ought to 
 be invoked arose from the fact that judges were at one time 
 supposed to be astute to defeat patents ; but it was only an appli- 
 cation of a principle of construction which is not at all special to 
 the subject-matter of patents, viz., that when you can see what 
 the true construction of the document is — or, in other words, what 
 the true intention of the parties is as expressed in their language 
 — you must not allow yourself to be drawn away from the true 
 view by over nicety in criticism of expression. (1 0. B. at p. 89.) 
 
 ((/) CoucHMAN V. Greener. C. A. and H. L. [1884] 
 
 Where in an action for royalties the defendant is estopped from 
 disputing the validity of the plaintiff's patent, if there is any doubt 
 on the construction the Court may, notwithstanding the estoppel, 
 
478 SPECIFICATION : 
 
 look at former patents, for the purpose of seeing wtat is the proper- 
 construction of the plaintiff's patent, but when once the patent is 
 construed, the only question is, was the article in question within 
 the patent or not. (1 0. B. 197 at p. 199.) 
 
 (g) Jackson v. Wulstenhulmes. C. A. [1884] 
 
 The plaintiff's patent was for improvements in the construction 
 of segmental toothed wheels : — Held, on the construction of the 
 specification that the patentee did not claim the turning or fitting 
 of the exterior rim or doing the same process to the wheel, which 
 was what he relied on in the Court of Appeal as constituting an 
 infringement. (1 0. B. 105.) 
 
 (K) Needham v. Johnson. C. A. [1884] 
 
 Lindley, L.J. : " I do not like the expression ' benevolent ' 
 interpretation. I do not believe in it. The question is whether 
 a given construction is the true construction ; but, of course, if 
 any patent is capable of more constructions than one, the general 
 rule would be applied, that you would put upon it that construc- 
 tion which makes it a valid patent, rather than a construction 
 which renders it invalid. There is no particular benevolence in 
 that. It is a general principle of interpretation applicable to all 
 documents, but of course those who talk about the benevolent 
 interpretation do not mean more than that. They do not mean 
 that you are to put on a specification an interpretation which will 
 turn that into an infringement which is not an infringement. Be- 
 nevolent interpretation has nothing to do with infringement ; it 
 has to do with the validity of specifications." (Griff. 168 ; 1 0. B. 
 49 at p. 68.) 
 
 (i) Philpott v.- Hanburt. [1884^5] 
 
 A patentee must give the nature of his invention in reasonably 
 accurate language. Grove, J. : "I do not say that he can possibly 
 do it so as to prevent a critic finding some fault with it. Therefore 
 I should read the speci6 cation liberally, and apply my mind to it 
 in this way : Is this specification such that a fair man, willing or 
 wishing to understand the specification, can reasonably gather 
 from it what the patentee considers his invention, and what he 
 says he prohibits the public from using ? " (Griff. 185 ; 2 0. B. 33 
 at p. 38.) 
 
 («•*) Otto v. Steel. [1886] 
 
 Inasmuch as it is the province of the Court to construe the 
 specification, a judge of first instance is bound by a decision of the 
 Court of Appeal upon the proper construction of the same specifi- 
 cation, although given in an action between different parties. 
 (3 0. B. 109.) 
 
 (j) Hocking v. Hocking. C. A. and H. L. [1886] 
 
 In certain circumstances it may be admissible to refer to an 
 existing specification in order to show what was the state of public 
 
Construction. 479 
 
 knowledge, and what was tte puMic use tlien going on of certain 
 things, in order, knowing that, properly to construe the words 
 which are in use in the specification in question. If the words of 
 the specification are clear, of course these specifications cannot 
 help in any way, nor could the public knowledge at the time help 
 in any way ; but if they are doubtful, then it may be legitimate 
 and useful to look to all matters which woxdd help the judge to 
 determine what was the state of public knowledge at the time 
 when the patent was granted. (Oriff. 129;, 3 0. B. 291.) Where 
 there has been a disclaimer the Court must look at and construe 
 fairly the disclaimer with the claim which still remains, and not 
 because something is disclaimed give a hard construction to that 
 which is stiU claimed. (4 0. B. 439.) Although it is true that 
 a grantor should not defeat his own grant, yet this principle 
 cannot be allowed to induce the Court to construe a specification 
 differently because the defendant is the patentee and assignor to 
 the plaintiff. (6 0. B. 69.) 
 
 (¥) United Telephone Company v. Bassano. C. A. [1886] 
 
 Looking to the context (in the Edison patent, No. 2909, of 1877), 
 the scientific witnesses said that they thought the words diaphragm 
 or tympan must mean a diaphragm capable of being acted upon, 
 and being made to vibrate by the motion of the air caused by the 
 human voice, or in some other way. That was their construction 
 of the specification, but the CoTirt itself must look really at the 
 specification, and give it its true construction, having got such 
 help as it can find from the scientific witnesses as to the meaning 
 in art of the words used. (Griff. 220 ; 3 0. B. 295.) 
 
 (Z) Fletcher v. Glasgow G-as Commissioners. [1887] 
 
 Lord Maclaren : " Where an invention consists in the discovery 
 of something that can be called a principle with a mode of making 
 it effective in practice, the courts are always very indulgent in the 
 construction of a specification, and very liberal towards the inventor 
 in the inclusion within the scope of the patent of anything that 
 can be regarded as a mechanical or chemical equivalent of the 
 process." (4 0. B. 386 at p. 388.) 
 
 (m) Hutchison v. Pattullo. [1888] 
 
 The patentee limited his first claim in clear and distinct terms 
 to the subjecting of oils and fat in shallow layers to the joint 
 action of air and heat, substantially as and for the purposes 
 described : — Held, on the construction of the specification, that 
 the second claim, which was "the combining of oxidised or 
 thickened vegetable or animal oils or fats with mineral oils, 
 substantially as and for the purpose hereinbefore described," did 
 not cover every method of oxidation by heat and air, but only the 
 mixing of fat oils already treated in the manner described or in 
 some equivalent manner. (5 0. B. 361.) 
 
480 SPECIFICATION : 
 
 (w) Automatic Weighing Machine Company v. Knight. C. A.' 
 [1889] 
 
 Lindley, L.J. : " We are told Isy the statute that we are to 
 construe all patents in the most beneficial sense to the advantage 
 of the patentee. Why that clause should have been put in I do 
 not know. I should have thought the true rule was to ascertain 
 the real meaning of the specification. . . . We certainly shall not 
 be obeying that command if we give to any specification so wide 
 a construction as to render the patent good for nothing. That 
 will not do. We must construe it so as to uphold the patent, and 
 make it good so far as we can. With regard to this specification, 
 as with regard to almost all others that come before us, they are 
 so drawn that it is conceivable to put a constructioa on them so 
 wide as to render them worthless. But then on the other haud it 
 is generally possible to construe them so narrowly as to render 
 them useless. But we must ascertain the real meaning, and must, 
 in obedience not only to this command, but common sense, construe 
 it so as to uphold it if it can be reasonably done." (6 0. B. 297 at 
 p. 307.) 
 
 (o) Kaye v. Chubb. H. L. [1888] 
 
 Although it is not for a witness to construe a specification, it is 
 quite allowable to ask him in an ordinary way what he under- 
 stands by it. (o 0. B. 650.) 
 
 (p) Voeweek & Son v. Evans. [1890] 
 
 In an action for infringement of a patent for improvements in 
 waist bands, and in the means of weaving webs suitable for such 
 uses, the specification stated that although three rollers were 
 shown in the drawings, it was to be understood that two rollers, 
 or any suitable number greater than three, might be used. The 
 claims were — first, for the waist band ; secondly, for the taking-up 
 motion with conically-formed rollers arranged as described : — Seld, 
 that the patentee claimed the waist band only when made by thel 
 means described; that, having regard to the state of knowledge, 
 the second claim must be taken to be for the means of weaving 
 described; and that, seeing that the use of two rollers was well 
 known, and that no express description of how to use two rollers 
 was given, the specification did not cover the use of two rollers, so 
 that the defendants who had used two rollers had not infringed. 
 (7 0. B. 167, 265.) 
 
 Row affected hy subsequent Discoveries. 
 (g) Ceossley v. Beverley. N. P. [1829] 
 
 Action for the infringement of a patent for " an improved gas 
 apparatus." In the specification the patentee said : " My improved 
 gas apparatus is for the purpose of extracting inflammable gas by 
 heat from pit-coal, or tar, or any other substance from which gas 
 or gases capable of being employed for illumination can be ex- 
 tracted by heat." It was objected to the sufficiency of the speci- 
 
The Claim. 481 
 
 fication, that tHe retort described would not do for making gas 
 from oil. Before the date of the specification, however, oil had 
 never been employed for that purpose : — Held, that the specification 
 was sufficient. (3 0. & P. 513 ; Mo. & Mai. 283 ; 1 Weh. P. G. 106.) 
 Tenterden, O.J., said : " I think it quite clear in this specification, 
 when he speaks of coal and other matters, he means matters ejusdem 
 generis. The patentee must be understood to mean things that were 
 in use, and not things which would produce gas, as everything 
 inflammable would, but, from being so expensive, were never 
 expected to be in use." (1 Weh. P. G. 107.) 
 
 (Z) Lewis v. Maeling. [1829] 
 
 A party took out a patent for an improved shearing machine, 
 to shear woollen cloth, and claimed four things as his invention 
 —one of them was a proper substance (plush) to brush the cloth. 
 In describing the machine in the specification, he directed plush 
 to be used for this purpose, but he nowhere stated that this was 
 an essential part of his machine. Bayley, J., said : " At the 
 period when this specification was made, the plush was in use, and 
 there is no reason to believe that this patentee did not think it 
 was a useful part of the machine. His patent is for an instrument 
 where something of that kind was always thought material ; and 
 I am of opinion that the subsequent discovery, that the plush was 
 unnecessary, is no objection to the validity of the patent." (4 G. & P. 
 57 ; 10 5. tfc 0. 27 ; 1 Weh. P. G. 496.) 
 
 (m) Neilson v. Haefoed. [1841] 
 
 If the apparatus, described in a specification, can be used bene- 
 ficially in its simplest form, it is no objection that great improve- 
 ments may have been made. (8 M. & W. 806.) 
 
 (n) Heath v. Unwin. H. L. [1855] 
 
 Parke, B. : " The specification must be read as persons acquainted 
 with the subject would read it, at the time it was made ; and if it 
 could be construed as containing any chemical equivalents, it must 
 be such as are known to such person at that time ; but those which 
 are not known at the time as equivalents, and afterwards are found 
 to answer the same purpose, are not included in the specification." 
 (25 L. J., G. P. 19.) 
 
 (o) SmpsoN V. HoLLiDAT. Ch. [1864] 
 
 Where a patentee describes, in his specification, his invention in 
 the best form that science could then give it, it is immaterial that 
 a cheaper way of carrying out the invention has been subsequently 
 discovered. (20 Newt. Lon. Jour., N. S. 116.) 
 
 The Claim. 
 
 (p) Kay ». Maeshail. Ch. [1836] 
 
 Lord Cottenham, L.C., said : " It (the claim) is introduced, lest 
 in describing and ascertaining the nature of his invention, and by 
 
 2 I 
 
482 SPECIFICATION: 
 
 wKat means the same is to be performed (particularly in the case 
 of a patent for an improvement), the patentee should have inad- 
 vertently desorihed something which is not new, in order to render 
 his description of the improvement intelligible. The claim is not 
 intended to aid the description, but to ascertain the extent of 
 what is claimed as new. It is not to be looked to as the means 
 of making a machine according to the patentee's improvements. 
 If, therefore, the specification, as containing the description, be 
 Sufficiently precise, it cannot be of any consequence that express 
 sions are used in the claim, which would be too general if they 
 professed to be part of the description." (2 Weh. P. C. 39 ; 1 My. 
 & Or. 383.) 
 
 (3) Walton v. Bateman. N. P. [1842] 
 
 . Action for the infringement of a patent for "certain improve- 
 ments in cards for carding wool," &c. The claim was for " the 
 application and adaptation of caoutchouc or india-rubber as the 
 fillet or sheet, or medium in which the dents or teeth are to be 
 set together in the manufacture of cards, and thereby obtaining 
 a superior elasticity and durability to cards as above described." 
 In describing the method of carrying out the invention, the 
 patentee recommended that a piece of linen should be fastened to 
 the back of the india-rubber. Cresswell, J., said to the jury : " I 
 was called on to express some opinion as to whether the plaintiff 
 claimed, as an essential part of his patent, the application of linen, 
 but I cannot help thinking there is some little confusion in the 
 use of the term, ' what he claims as an essential part of his patent.' 
 He claims, as distinctly as possible, the application of india- 
 rubber as a substitute for leather in making the backs of cards 
 in order to get an elastic bed; that is what he claims, and there 
 is nothing about the cloth in that. But it is not sufficient that a 
 man should claim a principle. He must add to it in his specifica- 
 ytion a mode of working out that principle practically, and that he 
 does now; for you will find he recommends, as the best mode 
 of working that out, the application of the cloth, but he does not 
 profess to say it cannot be done without. If he had said, it cannot 
 be done without, I should have thought he would have said the 
 linen was essential to the working out of his principle." (1 Weh. 
 P. a. 622.) 
 
 (r) Heath v. TJnwin. H. L. [1855] 
 
 ' Pollock, C.B. : " The right of the plaintiff does not turn upon the 
 extent of his claim, but upon the communication made to the public 
 as to the mode of accomplishing his object, and he has no right to 
 claim anything but that which he has communicated to the public, 
 however large in point of language his claim may appear to be." 
 (6 H. L. Gas. 540; 26 L. J.,.G. P. 20.) 
 
 (s) Tetley v. Easton. [1857] 
 
 A patentee describing his invention in the specification, is to 
 be taken to claim as part of his invention all that he describes as 
 
The Claim. 483 
 
 tKe means by wHcli it is to be carried into effect, Trnless lie clearly 
 expresses a contrary intention. (2 0. B., N. S. 706 ; 26 L. J., G. P. 
 269.) 
 
 (/) HiNKs V. Safety Lighting Company. M. E. [1876] 
 
 Jessel, M.E. : " It is for the patentee to tell the world that 
 of which he claims a monopoly ; to tell them, ' Yon may do 
 everything but this; but this you must not do, this is my 
 invention.' 
 
 " With the view of getting this into a narrow compass, it has 
 long been the practice of patent agents to insert in specifications 
 the distinct claim of what they say is comprised in the patent, 
 meaning that nothing else is comprised, that everything else is 
 thrown open to the public, or, to put it in other words, if a man 
 has described in his specification a dozen new -inventions of the 
 most useful character, but has chosen to confine his claim to one, he 
 has given to the public the other eleven, and he has no right to be 
 protected as regards any one of the other eleven if he wishes to 
 recall that gift which he has made by pubKshing the specifica- 
 tion." (4 Oh. D. 612.) 
 
 (m) Plimpton v. Spillee. C. A. [1877] 
 
 James, L.J. : " The real object of what is called a claim, 
 which is now much more commonly put in than it used to be 
 formerly, is not to claim anything which is not mentioned in the 
 specification, but to disclaim something. A man who has invented 
 something gives in detail the whole of the machine in his 
 specification. In doing that he is of necessity very frequently 
 obliged to give details of things which are perfectly known and 
 in common use — he describes new combinations of old things to 
 produce a new result, or something of that kind. Therefore, 
 having described his invention, and the mode of carrying that 
 invention into effect, by way of security, he says : ' But take 
 notice, I do not claim the whole of that machine, I do not claim 
 the whole of that modus operandi, but that which is new, and that 
 which I claim is that which I am now about to state.' That 
 really is the legitimate object of a claim, and you must always 
 construe a claim with reference to the whole context of a specifi- 
 cation." (6 Oh. D. 426.) 
 
 (») Westinghouse v. Lancashire and Yorkshire Eailway Company. 
 [1884] 
 It is necessary to look at the whole of the specification, and at 
 the state of knowledge at the time of its publication, in order 
 to decide whether a particular claim is a claim to a combination 
 of several things some new some old, or a claim to several distract 
 inventions. (G=nJ. 244; 1 0. iJ. 98, 229.) 
 
 (to) Jackson v. Wolstenhulmes. 0. A. [1884] 
 
 Patent for improvements in the construction of segmental 
 toothed wheels. Bowen L.J. : " The fitting and turning is not 
 
 2 I 2 
 
484 SPECIFICATION: 
 
 really treated as part of the invention nor is it claimed, It is 
 mentioned in tlje previous part of tjie specification, but when we 
 come to the claim at the end the claim omits it. It must be 
 remembered that claims are for the security of patentees, to 
 prevent it being said that the patentee has claimed more than 
 can be really supported as his invention." Fry, L.J. : " I put 
 the question to myself in another way. Supposing it were old, 
 and supposing it were claimed, how could you disclaim it?" 
 (1 O. B., 105 at p. 109.) 
 
 (a;) Gandy v. Eeddaway. C. A. [1885] 
 
 The claim was for " constructing belts or bands for driving 
 machinery, of cotton canvas or duck, woven hard and stitched and 
 saturated and soaked with oil, such as linseed oil, or any combina- 
 tion thereof, as herein described or set forth, or any modification 
 thereof." It was proved that there were ten kinds of cotton 
 canvas woven hard, and that sf)me of them were not sufficiently 
 pliable for use with small pi;illeys. 
 
 Esher, M.E. : " "What do you find in this claim ? ... It means 
 this, that if you take any of ttiat class of cotton canvas, known in 
 the market as ' hard woven canvas ' to make belting for machinery 
 in the ordinary way for an ordinary machine, that will do. There 
 is no distinction pointed out that it will only do for machinery of 
 one particular size, and that it will not do for another. It is that 
 that will do for belting. If that is the constiuction on the face of 
 it. could that construction be altered or modified by evidence ? I 
 think it might. If it could be shown that although those words 
 ' cotton canvas woven hard ' do, on the face and surface of them, 
 claim the whole class, yet no ordinary workman of ordinary skUi 
 and knowledge would think of taking any more than one part of 
 that class, why then I should say that the effect would be that this 
 would be a claim, not for that pait which no ordinary workman 
 ■would ever take, because that would be absurd and make it bad 
 at once, but it would bring the true construction of the specifica- 
 tion and claim, with that knowledge to be only for that part 
 which an ordinary workman might take. . . . But if that was the 
 true solution, it was for the plaintifi^ to show it, and they never 
 asked a question to show it. . . . The claim is too large and the 
 specification must be held to be bad." {Griff. 101 ,- 2 0. B., 49 afc 
 p. 62.) 
 
 (j/) Lucas v. Miller. [1885] 
 
 The claim is in point of fact a disclaimer ; it shows what parts 
 and what parts only of the whole invention you mean to protect 
 by your patent. (Griff. 156; 2 0. B., 155.) 
 
 (z) Easteebkook v. Great Western Eailwat Company. [1886] 
 
 The office of the claim is to protect the patentee from the 
 danger of being supposed to make claims beyond those which he' 
 elects to make, and it must therefore limit his patent rights to 
 what it fairly embraces. (Griff. 81 ,; 3 0. B. 94.) 
 
The Claim. 485 
 
 (a) Paiebuen v. Hodsehold. C. a. [I886J 
 
 In an action for infringement of a patent for improvements 
 in tram-oar engines, the main question was whetlier the patentee 
 bad sufficiently indicated that in the water-lifting part of his 
 apparatus the water was to rise into the vacuum chamber in a 
 divided column. Lindley, L.J. : "Not only has he not claimed it, 
 but he has never pointed out the importance of it. . . . And it 
 appears to me it would extend the scope of patents to a degree 
 which would be alarming to inventors and other persons engaged 
 m scientific pursuits, if you were to hold with regard to a patent 
 like this, that a small portion of it, adopted by somebody else 
 not in combination with the rest of the invention, but solely and 
 separately and without in fact ever having pointed out that the 
 J)art so taken solely and separately was of the essence of the 
 invention, is to be held to be infringement." (Griff. 96 ; 3 0. B., 
 128, 263 at p. 267.) 
 
 (6) Edison v. Woodhouse. (No. 2.) C. A. [1887] 
 
 Every claim in every patent must be read and construed with 
 reference to the specification, and not as if the claim were an 
 isolated sentence having no connection with or reference to what 
 precedes it. To see what is meant by carbon gas or liquid we 
 must turn to the specification, and when we do so we cannot 
 conceive that anyone reading the patent with a view to under- 
 stand it would ever dream that carbonic oxide or carbonic acid 
 could ensure the purpose or could be meant by carbonic gas 
 (Griff. 90; 3 0. B. 183; 4 0. B. 99.) 
 
 (c) SiDDBLL V. ViCKERS. 0. A. [1888] 
 
 By sub-sect. 5 of sect. 5 of the Patents Act, 1883, it is now for 
 the first time required that the complete specification must end 
 with a distinct statement of the invention claimed. " Distinct " 
 here means independently and apart from the mere description 
 of the nature of the invention, and of the way in which it is 
 to be carried into efiect. But this subsection is a mere direction 
 to be attended to by the comptroller and the law officer when the 
 matter conies before them ; and if they are satisfied, then unless 
 independently of this provision, the specification is so indefinite 
 as to make the patent bad, the mere fact that there is not a 
 compliance with this or with other provisions of section 5, will not 
 make the patent bad. (39 Ch. D. 92.) Affd. in H. L. (7 0. B. 292.) 
 
 (ci) Kelly v. Heathman. [1890] 
 
 The patentee claimed for his telescopic ladder (1) that two 
 ladders occupy the place of one ; (2) the working by a cord ; (3) the 
 simple bracket lever : — Held, that he meant to claim the combination 
 of tUe three things, and that the claim was sufficiently distinct, or 
 if not, that the patent was not thereby invalidated. (7 0. B. 343.) 
 
 (d) Leadbeateu v. Kitchin. C. A. [il890] 
 
 In order to interpret the claim you must look at the claim and 
 all the rest of the specification together. (7 0. B. 235.) 
 
486 SPECIFICATION : 
 
 Effect of Brawings annexed to Specification. 
 
 (d) BocTLTON V. Bull. [1795] 
 
 Eooke, J. : "I am not aware of any rule of law which re- 
 quires a model or a drawing to be set forth, or which mates void 
 an intelligible specification of a mechanical improvement, merely 
 because no drawing or model is annexed." (2 H. Bl. 481.) 
 
 (e) Ex parte 'Pox. Ch. [1812] 
 
 A specification must be sufficient independently of the drawings. 
 (1 F. c6 £. 67 ; 1 Web. P. C. 431.) [But see Powpard v. Fwrdell, 
 p. 487 (m).] 
 
 (/) BoviLL V. MooEE. N. p. [1816] 
 
 The drawings annexed to the specification need not be well 
 executed, or skilfully drawn ; they are sufficient if they enable a 
 workman of fair and competent skill in mechanism to make the 
 patented machine. {Bm, P. G. 369.) 
 
 {g) Beunton v. Hawkes. N. P. [1820] 
 
 Abbott, C.J. : "If a drawing, or figure, enables workmen of 
 ordinary skill to construct the improvement, it is as good as any 
 written description." (1 Carp. P. G. 410.) 
 
 {h) Bloxam «. Elsee. N. P. [1825] 
 
 Abbott, C.J., said : " An inventor of a machine is not tied down 
 to make such a specification, as, by words only would enable a 
 skilful mechanic to make the machine, but he is to be allowed 
 to call in aid the drawings which he annexes to the specification ; 
 and if, by a comparison of the words and the drawings, the one 
 will explain the other sufficiently to enable a skilful mechanic to 
 perform the work, such a specification is sufficient." (1 G. & P. 564.) 
 
 (i) Morgan v. Seaward. N. P. [1836] 
 
 Drawings are to be taken as part of the specification. (1 Weh. 
 P. G. 173.) 
 
 O') Hastings v. Brown. [1853] 
 
 A drawing may be taken to explain an ambiguity in the 
 written description of the invention contained in the specification. 
 (1 E. & B. 454.) 
 
 (Ic) Morton v. Middleton. [1863] 
 
 Drawings connected with the specification, and referred to in 
 the letter-press, are to be examined and construed in connection 
 with the specification; and, therefore, their intelligibility is a 
 matter for the jury. (1 Gr. S., Srd Ser. 722.) The absence of a 
 scale attached to drawings with a specification is an imperfection ; 
 and when any question as to identity of proportions arises, their 
 absence becomes a matter of importance. (16. 724.) 
 
 (0 Foxwell v. Bostock. Ch. [1864] 
 
 Lord Westbury, C. : "It was contended by the plaintiff's 
 counsel, and perhaps justly, that a patent for a new machine 
 
Comparison of Specifications. 487 
 
 would be good if the specification contained nothing but clear 
 drawings of the machine and a description of them." (4 De G., 
 J. & S. 303 ; 10 L. T. Bep., N.S. 146.) 
 
 (to) Daw v. Elet. Ch. [1867] 
 
 _ Where a specification in the first instance describes the inven- 
 tion in too general terms, but afterwards, in describing the 
 method of performiag the invention, refers to certain figures in 
 drawings annexed thereto, and the claim made is for the manu- 
 facture of the invention described with reference to those figures, 
 the specification is suflSoient. (L. B. 3 Eq. 500 (n.) : 14 W. B. 126 ; 
 13 i. r. Bep., N. S. 399.) 
 
 (n) PoupARD V. Fardell. Ch. [1869] 
 
 Malins, V.-O. : " A specification may consist of a drawing alone, 
 and Hx parte Fox is clearly overruled." (18 W. B. 129.) 
 
 (o) Olaek v. Adie (First App.). H. L. [1877] 
 
 In the drawing of a machine attached to a specification there 
 was shown an intervening space, or opening, between two parts of 
 the machine, the subject of the patent ; it was intended as the 
 arching of a cutter-plate, but this was not referred to and 
 explained in ijjie specification. In the specification there was the 
 statement of an evil in existing machines, and upon careful 
 examination by a skilful person, he might suppose that the space 
 exhibited in the drawings was inteaded to obviate this evil, but 
 there was no statement to that effect, nor was the form of the 
 opening described, and described as a necessary quality of 
 improvement in the machine. This form was afterwards relied 
 upon as one of the great improvements in the combination of the 
 patented apparatus : — Held, that as it had not been properly 
 explained, described, and claimed, the specification was defective. 
 (2 App. C. 315.) 
 
 (oi) Stewart and Briggs v. Bell's Trustee. [1883] 
 
 An inference from the drawings cannot be held to control the clear 
 language of the specification. (11 Grf. of Sess. G., 4:th series, 236.) 
 
 (o *) Paiebuen r. HonsEHOLD. C. A. [1886] 
 
 It is not sufficient for a patentee to insert in his drawing an 
 important part of his invention, if he neither claims it nor points 
 out the importance of it in the specification. (3 0. B. 263.) 
 
 Comparison of Specifications. 
 
 (p) MuNTZ V. FosTEE. N. P. [1844] 
 
 Tindal, C.J. : " The identity of the inventions described 
 in two specifications is a question for the jury." (2 Web. 
 P. C. 105.) 
 
 (q) Allen v. Eawson. [1845] 
 
 Coltman, J., delivering the judgment of the Court, said : " It 
 was objected that it should have been left to the jury to say 
 
488 SPECIFICATION : 
 
 whether the present patent and Eohertson's patent were the same 
 ■as to the method of diagonal or cross felting. On looking at the 
 judge's notes, it appears that there was no evidence given to show 
 that the two were the same : and, standing as the question did 
 nakedly on the two specifications, the constructions of them, 
 according to the authority of Neilson v. Harford, was for the judge, 
 and not for the jury." (1 C. B. 571.) 
 
 (r) Tetley v. Easton. N. P. [1852] 
 
 Pollock, C.B. : " The question as to the identity of two inven- 
 tions described in the specifications is for the Court." (Macr. 
 
 P. a 68.) 
 
 (s) Bush v. Pox. H. L. [1856] 
 
 In an action for an alleged infringement of a patent, where the 
 defence is that the supposed invention is not new, the judge may 
 compare the plaintiff's specification with the specification of A 
 previous patent, and may on such comparison direct the jury to 
 find a verdict. (6 H. L. Gas. 707 ; Macr. P. C. 178 ; 2 Jur., N. S. 
 1029 ; 25 L. J., Ex. 261.) 
 
 .(<) Booth v. Kennaed. [1857] 
 
 Held, upon the authority of Busk v. Fox, that as the want of 
 novelty in the plaintiif's invention appeared clearly from the two 
 specifications in evidence, it was for the Court, and not for the 
 jury, to determine the identity of the two supposed inventions. 
 (2 H. (£ JV: 84 ; 26 L. J., Exch. 306.) 
 
 (u) Thomas v. Poxwell. [1858] 
 
 Lord Campbell, C.J. : " We by no means lay down, as a general 
 •rule, that upon a question of novelty of invention such as this, 
 raised by the comparison of two specifications, it must necessarily 
 be a pure question of law for the Court. The specifications may 
 contain expressions of art and commerce, upon which experts 
 must be examined, and there may be conflicting evidence raising a 
 question of fact to be determined by the jury. But it is quite 
 clear that there may be cases in which the Court would be bouud 
 to decide the question of novelty exclusively : for the two 
 specifications might be, in ipsissimis verbis, the same ; and, if they 
 be in such plain and common language that the judge is sure he 
 underststnds their meaning, he is bound to construe them as he 
 dnes other written documents. (5 Jur., N. S. 38 ; affirmed on appeal, 
 eJur.,N.S.2Tl.) ' 
 
 (v) Hills v. London Gas Light Company. [1860] 
 
 The plaintiff obtained in 1849 a patent for the purification of 
 coal gas by means of hydrated oxides of iron. In 1847, P. 
 having obtained a patent for the purification of gas by chloride of 
 calcium, specified a mode of making the chloride of calcium by 
 decomposing muriate of manganese, iron or zinc, and said, " the 
 oxides or Ciirbonates which result are useful for the said purifica- 
 
Comparison of Specifications. 489 
 
 tion of gas, and need not be removed." The oxides so prepared 
 ■would be Kydrates; — Held, that the Court, on a comparison of F.'s 
 specification with that of ,the plaintiff, could not say, as a matter 
 of law, that P. had anticipated the plaintiff's invention. (5 H. & 
 N. 312; 29 L. /. Ex. 409.) Bramwell, B., in delivering the 
 judgment of the Court, said: "We hold that there are certain 
 cases in which, upon the mere collocation of the two specifications, 
 or the specification of a patent and a previous written document, 
 the Court may say that the patentee has been anticipated. 
 .Undoubtedly that is so ; the process may be described in identi- 
 cally the same words, or, if there be a variety in the words, there 
 may be no variety in the process. Probably it will be found that 
 in the case of what are called mechanical patents, the Court can 
 do so more readily than in the case of chemical patents, or in. 
 •other cases where the invention depends on what may be called the 
 occult qualities of matter — those in fact whiuh are not the subject 
 of popular knowledge." (5 E. & N. 363.) 
 
 (w) Betts v. Menzibs. H. L. [1862] 
 
 As specifications describe external objects, though the language 
 in two specifications be identically the same, it would be im- 
 possible to predicate of the two that they described exactly the 
 same identical external object, unless the terms of art used in 
 both the specifications could be ascertained to have been the same 
 at the date of both the patents. The question of identity of 
 signification belongs to the province of evidence, and not to the 
 province of construction. (10 E. L. Gas. 117; 31 L. J., Q. B. 
 233; 11 W. B. 1; 7 L. T. Bep., N. S. 110.) Wilde, B., in his 
 answers to the House of Lords, said : " If the terms of the two 
 specifications are identical, and if it is not disputed that the terms 
 ,of art used in the one have the same meaning as the same terms 
 used in the other, which, from the lapse of time between the dates 
 of the two patents may not always be the case, the Court ought to 
 determine that the first publication anticipated the second, with- 
 out evidence, and without any proof that either the first or second 
 was practicable. If, though not identical, the language used in 
 the two, when construed by the Court, describes identically the 
 same process, machine, or manufacture, the Court may, subject to 
 the same remark as to the terms of art, decide at once upon the 
 question of anticipation. But if after construction, and after the 
 meaning of the parties in the two documents has been ascertained 
 by the Court, there be any difference between the two things 
 described, which may be essential or material to the invention, 
 and which is contended by either of the parties to be essential or 
 material to the invention, the Court cannot decide such a contro- 
 versy ; it has neither materials nor means for so doing, and it must 
 go to a jury. In a word, the Court can pronounce two identical 
 descriptions to portray two identical inventions ; but when the 
 descriptions are different, the identity in substance of the two 
 inventions is a matter to be established by extrinsic evidence" 
 (10 H. L. Gas. 134.) 
 
490 &TAY OF PEOCEEDINGS : 
 
 (») Hills v. Evans. Cli. [1862] 
 
 In the compariBon of two specifications, each of which is filled 
 with terms of art, and with the description of technical processes, 
 the duty of the Court is confined to giving the legal constraction 
 of such documents taken independently, but the comparison of 
 the two instruments, and ascertaining whether the words, as 
 interpreted by the Court, and contained in one specification, 
 do or do not denote the same external matter as the words, as 
 interpreted and explained by the Court, contained in the other 
 specification, is a matter of fact, and within the province of a jury. 
 (31 L. J., Ch. 467 ; 8 Jur., N. S. 626 ; 6 i. T. iJep., N. S. 90.) ■ 
 
 Stamp on notice of Appeal. 
 
 (y) Aire and Calder Works. [1888] 
 
 The stamp being £5, sufficient costs were allowed to cover it. 
 (6 O. B. 146.) 
 
 Stay of Proceedings, p. 381 (a), (c). 
 Subj act-Matter. 
 
 Manufacture, 
 
 privilege of sole working of new, may be granted under the Statute of 
 
 Monopolies, p. 491 
 invention means new manufacture within that Statute, Patents Act, 
 
 1888, sect. 46, p. 491 
 includes a machine, pp. 492 (b), 495 (g), 497 (w), 499 (0 
 or a mode of constructing it, p. 495 (jr) 
 new combination, pp. 500-511 
 vendible manufactured article, pp. 492 (b), 493 (d), 494 (/), 
 
 498 (p), 500 («;•), 517 (r) 
 new process, pp. 492 (b), 493 (d), 498 (p), 499 (i!), 511 to 518 
 new use of an old material where there is invention, p. 532 
 the application of principles with the modes of applying them, pp. 
 495 (h), 496 (i) (k), 498 (o) (<?), 499 (u), 504 (I), 512 (c), 533 (k), 
 640 (a), 541 (a) (6), 544 (e) 
 
 practical application of a known chemical reaction, p. 498 (r) 
 every useful discovery is not patentable, p. 499 (t) 
 words " method " and " process " synonymous, p. 493 (cZ) 
 amount of invention, pp. 529 (6), 534 (n), 576 (s) 
 labour, pains and expense of inventor, p. 529 (J) 
 delay in obtaining patent for, p. 497 (m) 
 
 when result only attainable by experiment, pp. 531 (/), 525 (u), 573 (g) 
 satisfying an existing demand, p. 500 (v). 
 Combination, 
 
 if new, component parts may be old, pp. 225 (h), 500 (a;), 501 (y) (z) 
 
 (a), 503 (/), (A), 504 (J), 505 (m) 
 producing an improved article, pp. 493 (d), 499 (s), 502 (e), 505 (n) 
 a cheaper article, pp. 493 (d), 502 (e), 505 (n) 
 same article more expeditiously, pp. 505 (m), 515 (k) 
 need not produce a new result, p. 505 (n) 
 an improvement on, pp. 501 {d), 504 (/') 
 
 when claimed, protects new and material parts, pp. 171, 503 (A), 537 (2) 
 slight alteration in, is sufficient if useful, pp. 508 (t), 522 (/) 
 three requisites of novelty, utiHty and diminished cost, pp. 509 (u), 510 (b) 
 novelty and utility usually sufficient, p. 508 (t) 
 provided there is some exercise of inventive faculty, p. 510 (z) (i) 
 
SUBJECT MATTER 491 
 
 alteration which invokes a law of nature otherwise unutilised, pp. 499 (m) 
 509 (v). 
 Process, 
 
 method synonymous with, p. 493 (d) 
 
 meaning of, p. 511 (cQ 
 new, to obtain old resxilt, pp. 512 (6), 514 (h) 
 application of old, to new purpose, p. 525 («) 
 
 each set of means to obtain old result patentable, pp. 512 (a),513 (c), 516 (g-) 
 but patent confined strictly to means, p. 515 (Z) 
 for commercial manufacture of chemical substance before only known. 
 
 to science, p. 516 (p) 
 omission of part of, pp. 513 (d), 514 (i), 515_ (J) 
 change in order of performing, p. 514 (g) 
 improvements in, pp. 496 (0, 499 (0, 513 (/), 520 (c) 
 patent for, to obtain new result protects against other processes for same 
 
 result, p. 517 (u) 
 for obtaining product previously unknown, p. 518 (v). 
 • Addition to a known machine or process, 
 
 where known machine or process is patented, pp. 502 (e), 520 (a) (b) (dy 
 improvement in mode of manufacture, without invention, p. 530 (c) 
 one test is would old machine have been infringement of new, p. 521 (/). 
 Application to a new use, 
 
 of a known machine, pp. 522 (I), 523 (p), 524 (0, 525 (v), 526 (w) , 
 material, with invention, pp. 496 (i), 501 (z), 522 (jm), 523 (2) (r), 
 529 (6) 
 without invention, pp. 527 (y), 528 (a), 530 (d) 
 process, pp. 512 (6), 524 (s), 525 («) 
 tools to work untried materials or to produce new forms, pp. 526 (x), 
 
 527 (2/) 
 result must be new and not analogous, p. 529 (6) 
 one test is, given required result, could anyone say that known' 
 
 machine would produce it, p. 531 (/) 
 or would it require some exertion of mind, p. 529 (J). 
 Application to an analogous purpose, 
 of a known machine, pp. 532 (,/), 536 (0) 
 
 contrivance, pp. 532 (i), 534 (m) (m), 537 (j) 
 material, p. 537 (p) 
 process, pp. 525 (m), 534 (I). 
 Principle, 
 
 meaning of, pp. 540 («/), 541 (&) 
 
 not patentable, pp. 515 (I) 516 (0), 540 (y), 541 (5), 542 (c) 
 but application of, by specified means is, pp. 495 Qi), 496 (i) (k), 498, 
 (0) (3), 499 (u), 504 (0, 512 (c), 533 (k), 540 (z), 541 (a) (6), 542 (c), 
 544 (e) (/) 
 theoretical discovery not patentable, p. 542 (d) 
 unless resulting in improvement, p. 542 (d) 
 may be material to essence of the invention, p. 544 (g). 
 Evidence of. See Practice, p. 361 (z). 
 Index of cases according to, pp. 583, seqq. 
 
 Manufacture. 
 
 Patents Act, 1883, sect. 46. In and for the purposes of this , Act, 
 "Invention" means any manner of new manufacture the subject of letters 
 patent and grant of privilege within section six of the Statute of Monopolies 
 (that is, the Act of the twenty-first year of the reign of King James the 
 Pirstf chapter three, intituled " An Act concerning monopolies and dispensa-. 
 
492 SUBJECT MATTEE : 
 
 tions with penal laws and the forfeiture thereof") and includes an alleged 
 invention (a). 
 
 (a) The 6th section of the Statute of Monopolies is as follows : — " Provided 
 also, and be it declared and enacted, that any declaration before mentioned 
 (against monopolies) shall not extend to any letters patents and grants of 
 privilege for the term of fourteen years or under, hereafter to be made, of the 
 sole working or making of any manner of new manufactures within this 
 realm, to the true and first inventor and inventors of such manufnctures, which 
 others at the lime of making such letters patents and iirants shall not use, 
 so as also they be not contrary to the law, nor mischievous to the State, by 
 raising prices of commodities at home, or hurt of trSde, or generally incon- 
 venient : the said fourteen years to be accompted from the date of the first 
 letters patents or grant of such privilege hereafter to be made, but that the 
 same shall be of such force as they should be, if this Act had never been 
 made, and of none other." 
 
 (y) Daecy v. Allin. [1602] 
 
 " Where any man, hj Ms own charge and industry, or by his 
 own wit or invention, doth bring any new trade into the realm, 
 or any engine tending to the furtherance of a trade that never 
 was used before, and that for the good of the realm, that in 
 such cases the king may grant to him a monopoly patent, for 
 some reasonable time, until the subjects may learn the same, in 
 consideration of the good that he doth bring by his invention to 
 the commonwealth, otherwise not." (Noy's iJ. 182 ; 1 Weh. P. G. 6). 
 
 (z) The Clothwoekers of Ipswich. [1615] 
 
 " If a man hath brought in a new invention, and a new trade 
 within the kingdom in peril of his life, and consumption of his 
 estate or stock, or if a man hath made a new discovery of any- 
 thing ; in such oases the king, of his grace and favour, in re- 
 compense of his costs and travail, may grant by charter unto him, 
 that he only shall use such a trade or traffic for a certain time, 
 because at first the people of the kingdom are ignorant, and have 
 not the knowledge or skill to use it ; but when the patent is 
 expired, the king cannot make a new grant thereof. For when 
 the trade is become common, and others haye been bound 
 apprentices in the same trade, there is no reason that such should 
 be forbidden to use it." {GodboU's B. 252 ; 1 Boll B. 4.) 
 
 (a) Mitchell v. Eeynolds. [1713] 
 
 " The grant of the sole use of a trade is void, but a grant of a 
 trade newly invented, and for a time, is good ; for the public has 
 an advantage in the invention of a useful trade, which, after a 
 limited time, is to be public ; and the inventor's industry is 
 sufficiently encouraged by the sole use of it secured to him by 
 charter for such a time ; but a second grant would be void, even 
 in this case ; and the statute 21 Jac. 1, c. 3, limits the time for 
 which such grant mny be made to fourteen years." (10 Mod. B. 
 130 ; 1 P. Wms. 181.) 
 
 (6) BouLTON V. Bull. [1795] 
 
 Heath, J., speaking of the word " manufacture " in 21 Jac. 1, 
 c. 3, s. 6, said : " What then falls within the scope of the proviso ? 
 
Manufacture. 493 
 
 Such Baanufactures as are reducible to two classes. The first 
 class includes machinery, the second substances (such as medicines) 
 formed by chemical and other processes, where the vendible 
 substance is the thing produced, and that which operates preserves 
 no permanent form. In the first class the machine, and in the 
 second the substance produced, is the subject of the patent. I 
 approve of the term manufacture in the statute, because it 
 prechides all nice refinements ; it gives us to understand the 
 reason of the proviso that it was introduced for the benefit of 
 trade. That which is the subject of a patent, ought to be 
 specified, and it ought to be that which is vendible, otherwise it 
 cannot be a manufacture." (2 H. SI. 482.) Chief Justice Eyre 
 said, when referring to the same subject : " It was admitted in the 
 argument at the bar, that the word ' manufacture ' in the statute 
 was of extensive signification, that it applied not only to things 
 made, but to the practice of mating, to principles carried into 
 practice in a new manner, to new results of principles carried into 
 practice. Let • us pursue this admission. Under things made, we 
 may class, in the first place, new compositi(ms of things, such as 
 manufactures in the most ordinary sense of the word ; secondly, all 
 mechanical inventions, whether made to produce old or new effects : 
 for a new piece of mechanism is certainly a thing made. Under 
 jfehe practice of making we may class all new artificial manners of 
 operating with the hand, or with instruments in common use, new 
 procpsses in any art producing effects useful to the public. When 
 the effect produced is some new substance or composition of things; 
 it should seem that the privilege of the sole working or making, 
 ought to be for such new substance or composition, without regard 
 to the mechanism or process by which it has been produced, which, 
 though perhaps also new, will be only useful as producing the new 
 substance. . . . "When the effect produced is no substance or comT 
 position of things, the patent can only be for the mechanism, if 
 new mechanism is used, or for the process, if it be a new method of 
 operating, with or without old mechanism, by which the effect is 
 produced." {lb. 493.) 
 
 (c) HORNBLOWER V. BOULTON. [1799] 
 
 Kenyon, C.J. : " I have no doubt in saying, that this ("Watt's 
 patent) is a patent for a manufacture, which I understand to be 
 something made by the hands of man." (8 T. Bep. 99 ; Dav. P. 0, 
 225.) 
 
 (d) Eex v. "Wheeler. Sci. Fac. [1819] 
 
 Abbott, C.J., delivering the judgment of the Court of King's 
 Bench, said : " It is well known that the granting of monopolies 
 was restrained by the statute 21 Jac. 1, c. 3, to the sole working or 
 making of any manner of new manufactures, and to the true and 
 first inventor of such manufactures. Now the word ' manufactures ' 
 has been generaUv understood to denote either a thing made, which 
 is useful for its own sake, and vendible as such, as a medicine, a 
 stove, a telescope, and many others, or to mean an engine or in- 
 strument, or some part of an engine or instrument, to be employed. 
 
494 SUBJECT MATTEE : 
 
 either in the making of some previously known article, or in some 
 other useful purpose, as a stocking-frame, or a steam-engine for 
 raising water from mines. Or it may, perhaps, extend also to a 
 new process to he carried on by known implements, or elements, 
 acting upon known substances, and ultimately producing some 
 other known substance, but producing it in a cheaper or more 
 expeditious manner, or of a better and more useful kind. But no 
 merely philosophical or abstract principle can answer to the word 
 manufactures. Something of a corporeal and substantial nature, 
 something that can be made by man from the matters subjected to 
 his art and skill, or at the least some new mode of employing prac- 
 tically his art and skill, is requisite to satisfy this word." Sup- 
 posing a new process to be the lawful subject of a patent, the word 
 *' method " may be properly used as synonymous with process. (2 
 B. & Aid. 349 ; 1 Carp. P. C. 397.) 
 
 (e) MiNTER V. Wells. [1834] 
 
 The patentee claimed " the application of a self-a'djusting lever- 
 age to the back and seat of a chair, whereby the weight on the seat 
 acts as a counter-balance to the pressure against the back of such 
 chair, as above described :" — Held, that the patent was good, as the 
 claim was, not for a principle, but for the application of a principle 
 so as to produce a specified effect in a specified manner. (5 Tyr. 
 163; 1 a, M. & B. 506; 1 Web. P. C. 134; 1 Carp. P. G. 639.) 
 
 (^f) Cornish v. Keene. [1837] 
 
 The patent was " for an improvement or improvements in the 
 making or manufacturing of elastic goods or fabrics applicable to 
 various useful purposes." The patentee, in his specification, said : 
 " The third object is to produce cloth from cotton, flax, or other 
 suitable material, not capable of felting, in which shall be inter- 
 woven elastic cords or strands of india-rubber, coated or wound 
 round with a filamentous material." To produce such a cloth, the 
 patentee introduced into the fabric threads or strands of india- 
 rubber, which had been previously covered by winding filaments 
 tightly round them ; they were then applied as warp or weft, or 
 as both, according to the direction of the elasticity required. The 
 strands of india-rubber were, in the first instance, stretched to 
 their utmost tension, and rendered non-elastic ; and being in that 
 ■state introduced in the fabric, they acquired their elasticity by the 
 application of heat after the fabric was made. Tindal, C.J., in de- 
 livering the judgment of the Court of Common Pleas, said : " Now 
 the first objection made to the patent so described is, that the in- 
 vention is not the subject-matter of a patent ; that it is neither a 
 new manufacture, nor an improvement of any old manufacture, but 
 is merely the application of a known material in a known manner, 
 to a purpose known before. The question, therefore, as to this 
 point is, does it come under the description of ' any manner of new 
 manufacture,' which are the terms employed in the statue of James ? 
 That it is a manufacture, can admit of no doubt; it is a vendible 
 article, produced by the art and hand of man, and of all the 
 
Mcmufdetwe. 495 
 
 instances that wotild. occur to the mind when inquiring into the 
 meaning of the terms employed in the statute, perhaps the very 
 readiest would be that of some fabric or texture of cloth. Whether 
 it is new or not, or whether it is an improvement of an old manu- 
 facture, was one of the questions for the jury, upon the evidence 
 before them ; but that it came within the description of a manu- 
 facture, and so far is an invention which may be protected by 
 a patent, we feel no doubt whatever. . . . The use of elastic 
 threads or strands of india-rubber, previously covered by filaments 
 wound round them, was known before ; the use of yams of cotton, 
 or other non-elastio material, was also known before ; but the 
 placing them alternately side by side together as a warp, and com^ 
 bining them by the means of a weft when in extreme tension, and 
 deprived of their elasticity, appears to be new, and the result, viz., 
 a cloth in which the non-elastic threads form a limit, up to which 
 the elastic threads may be stretched, but beyond which they cannot, 
 and therefore cannot easily be broken, appears a production alto- 
 gether new. It is a manufacture at once ingenious and simple " 
 (3 Bing. N. G. 570 ; 6 L. J., 0. P. 226 ; 4 Scott, 337 ; 2 Hodges, 
 281 ; 1 Weh. P. G. 613 ; 2 Carp. P. G. 371.) 
 
 (j) Morgan v. Seaward. [1837] 
 
 , Parke, B., in delivering the judgment of the Court, said : " The 
 word 'manufacture' in the statute (21 Jac. 1, c. 3, s. 6) must be 
 construed in one of two ways : it may mean the machine when 
 completed, or the mode of constructing the machine." (2 M. <& W 
 '658 ; 1 Jur. 528 ; 1 Weh. P. G. 193 ; 2 Garp. P. G. 100.) 
 
 Qi) Neilson v. Harford. [1841] 
 
 Patent for an invention " for the improved application of air to 
 produce heat in fires, forges, and furnaces, where bellows and other 
 blowing apparatus are required." The patentee, in his specifi.ca-' 
 tion, described his invention thus : — " A blast or current of air 
 must be produced by bellows or other blowing apparatus in the 
 ordinary way, to which mode of producing the blast or current of 
 air this patent is not intended to extend. The blast or current of 
 air so produced, is to be passed from the bellows or blowing appa- 
 ratus into an air vessel or receptacle made sufficiently strong to 
 endure the blast, and through or from that vessel or receptacle 
 by means of a tube, pipe, or aperture, into the fire, forge, or furnace. 
 The air vessel or receptacle must be air tight, or nearly so, except 
 the apertures for the admission or emission of the air ; and at the 
 cominencement and during the continuance of the blast, it must be 
 kept artificially heated to a considerable temperature." Parke, B., 
 in delivering the judgment of the Court, said : " It is very difficult 
 to distinguish it (the patentee's specification) from the specification 
 of a patent for a principle, and this, at first, created in the minds 
 of some of the Court much difficulty ; but, after full consideration, 
 we think that the plaintiff does not merely claim a principle, but a 
 machine embodying a principle, and a very valuable one. We 
 think the case must be considered as if, the principle being well 
 
d96 SUBJECT MATTEE : 
 
 known, the plaintiff had first invented a mode of applyiiig it by a 
 mechanical apparatus to furnaces ; and his invention then consists 
 in this — the interposing a receptacle for heated air between the 
 blowing apparatus and the furnace. In this receptacle he directs 
 the air to be heated by the application of heat externally to the 
 receptacle, and thus he accomplishes the object of applying the 
 blast, which before was of cold air, in a heated state to the furnace." 
 (8 M. & W. 806 ; 11 L. J.,Ex. 20 ; 1 Weh. P. G. 331.) 
 
 (i) Walton v. Bateman. N. P. [1842] 
 
 Action for the infringement of a patent for " improvements ia 
 cards for carding wool, cotton, silk, and other fibrous substances, 
 and for raising the pile of woollen and other cloth." After de- 
 scribing the manner in which the invention was to be carried out, 
 the patentee continued : " And I do hereby confine my claim of 
 invention to the application and adaptation of caoutchouc or india- 
 rubber as the fillet or sheet, or medium in which the dents or teeth 
 are to be set together in the manufacture of cards, and thereby 
 obtaining a superior elasticity and durability to cards as above 
 iSescribed." Cresswell, J., in summing np to the jury, said : " There 
 is sufficient of a new manufacture in this case to justify and main- 
 tain the patent that has been granted. I think that there is a new 
 principle developed, carried out, and embodied in the mode of using 
 that principle." (1 Web. P. G. 613.) 
 
 (y) Crane v. Peice. [1842] 
 
 If the result produced by a previously unknown combination of 
 two previouBly known methods is either a new article or a better 
 article, or a cheaper article to the public than that produced before, 
 such combination is an invention or manufacture intended by the 
 statute, and may be the subject of a patent (see p. 502). (12 L. J., 
 
 a p. 81.) 
 
 (it) Stead v. Williams. N. P. [1843] 
 
 Cresswell, J., stated it as his opinion that there might be a valid 
 patent for a method of paving with wood, (2 Web. P, G. 134.) 
 
 {I) Heath v. Unwin. N. P. [1843] 
 
 The plaintiff obtained a patent for certain improvements in the 
 manufacture of iron and steel. The specification described the in- 
 vention as consisting in " the use of carburet of manganese in any 
 process whereby iron is converted into cast steel," and directed the 
 unfused carburet of manganese to be put into the pot containing 
 the steel in a fused state. The patentee claimed as his invention 
 " the use of carburet of manganese in any process for the conver- 
 sion of iron into steel." The defendant manufactured cast steel by 
 placing oxide of manganese and carbonaceous matter into the pot 
 at the same moment as the steel. They produced the same effect 
 upon the steel as the carburet of manganese, but at a cheaper rate. 
 This method of producing the effect was not known at the time of 
 taking out the patent. Abinger, C.B. : " The materials or elements 
 
Manufacture. 497 
 
 of cafburet of manganese, as used by the defendant, being out of 
 all proportion cheaper than tbe carburet of manganese itself, the 
 use of such materials in the said composition is a new discovery or 
 invention, and not within the letters patent." (2 Web. P. 0. 217.) 
 Parke, B., in the course of his answer to the question proposed by 
 the House of Lords, said that the defendant in this case might have 
 taken out a patent for this new mode of working. ("25 L. J., 
 a P. 20.) ^ 
 
 (m) Bentley v. Fleming. N. P. [1844] 
 
 A machine does not cease to be the subject of a patent, merely 
 because of the length of time during which the inventor may keep 
 it by him, after it has been made a complete workable machine. 
 (1 a & K. 587.) 
 
 (ji) The Electric Telegraph Company v. Brett. [1861] 
 
 Patent " for improvements in giving signals and soundina^ 
 alarums in distant places by means of electric currents transmitted 
 through metallic circuits." Subsequently to the patent, it was dis- 
 covered that the return current could be conducted back to the 
 battery through the earth as effectually as through a oontinuotis' 
 metallic circuit, and this was the method used by the defendants. 
 The defendants contended that the patent would protect the im- 
 provements of the patentee only when such improvements were 
 applied to circuits that were metallic throughout, and therefore that 
 they were entitled to employ the patentees' improvements. Cress- 
 well, J., delivering the judgment of the Court, said : " It appears to 
 us reasonable to hold, that a claim for a patent for improvements in 
 the mode of doing something by a known process, is sufScient to 
 entitle the claimant to a patent for his improvements, when applied 
 either to the process as known at the time of the claim, or to the 
 same process altered and improved by discoveries not known at the 
 time of the claim, so long as it remains identical with regard to the 
 improvements claimed and their application." One of the claims 
 of the patentee was an improvement "whereby a set of combined 
 conducting wires, as aforesaid, having a voltaic battery and a set 
 of buttons or finger keys, and also a dial with magnetic needles for 
 giving signals, as well as an apparatus for sounding alarums at 
 each end of the set, may also have duplicates of such dials, with 
 needles and, apparatus for alarums at intermediate places between 
 the two ends ; all such duplicates operating simultaneously with 
 each other, and with the two end dials and alarums, to give like 
 signals, and to sound like alarums." The jury found " that the 
 sending of signals to intermediate stations was new to the plain- 
 tiffs." The defendants contended that this was a claim to the in- 
 vention of a principle, and therefore that it was not the subject 
 matter of a patent. Cresswell, J., said : " We think that the 
 patentees not only communicated the idea or principle that dupli- 
 cate signals might be given, but showed how it might be done, i.e., 
 by duplicate apparatus at each station, and that this is a fit siibject 
 of a patent. It was, indeed, contended that it was obvious and 
 
 ^ ^r 
 
498 SUBJECT MATTER : 
 
 self-evident ttat a circuit having a distant coil could liave inter-' 
 mediate ones also, which would operate in the same manner ; but: 
 it appears to us, that though it might he probable a priori that such 
 would be the case, it was matter of experiment that it could prac- 
 tically be done, and that the invention of the patentees, though 
 simple, was one for which a patent miirht be granted." (10 Com. 
 B. 838 ; 20 L. J., G. P. 123 ; 15 Jur. 579.) 
 
 (o) Newton v. Yauchee. [1851] 
 
 The defendant had obtained a patent for an improvement in 
 packing hydraulic and other machines, by means of a lining of soft 
 metal, the effect of which was to make certain parts of the machine 
 air and fluid tight. Subsequently to this the jjlaintiff discovered 
 that soft metal had the eiFect of diminishing friction, and of pre- 
 venting the evolution of heat when applied to the surfaces in con- 
 tact of machines in rapid motion, and subject to pressure. And he 
 accordingly obtained a patent "for ceitain improvements in the 
 construction of boxes for the axles or axle-trees of locomotive 
 engines, &o., and also for improvements in oiling or lubricating the 
 same." (6 ExcJi. 869 ; 21 L. J., Exch. 305.) Parke, B., said : 
 " Upon looking at his (the plaintiff's) specification, which embodies 
 a new principle in a new machine, it differs materially from the 
 defendant's, which is for the purpose merely of packing; for in 
 the plaintifTs invention it is essential that there should be not 
 only the intervention of soft metal, but that there should also be 
 a hard rim covered in part with that soft metal, or some other 
 means, to prevent the soft metal fiom expanding, and getting out 
 of its place. But any other hard rim, covered with soft metal, or 
 substances covered with soft metal, are part of that machine. 
 That is no part of the defendant's invention. Therefore, I think 
 the discovery of the person under whom the plait)tiif claims, is 
 not merely a discovery of a new principle, but a new principle 
 embodied in a new machine. Then, that being so, if the plaintiff 
 claims a patent for that new principle embodied in a new machine, 
 and that only for the purpose of diminishing friction, and the 
 application of it is only to oases where there is pressure as well ■ 
 as motion, that patent is perfectly good." (6 Exch. 865.) 
 
 (j)) Bdsh«. Fox. [1854] 
 
 Coleridge, J. : " Manufacture includes both process and result." 
 (Macrory's P. G. 176.) 
 
 (q) Haewood v. Geeat JSTortheeii Eailway Company. [1860] 
 
 Blackburn, J. : " The word ' manufacture ' extends not only to 
 principles that niay be supposed to be patented, but to the modes 
 of applying those principles, in practical use, in the result." (29 
 L. J., Q. B. 202.) 
 
 (r) Hills v. London Gaslight Co. [I860] 
 
 Before the date of the plaintiff's patent, it was known that 
 hydi'ated oxides of iron would absorb sulphuretted hydrogen ; but 
 
Mcmufacture. 499 
 
 it was not known that they could he practically used in the puri- 
 fication of coal-gas from sulphuretted hydrogen : — Held, that a 
 patent might he had for applying hydrated oxides to absorb 
 sulphuretted hydrogen from coal-gas. It was also known that 
 sulphuret of iron, produced by the action of sulphuretted hy- 
 drogen upon hydrated oxide of iron, would be re-oxidised by 
 being exposed to the action of atmospheric air. But it was not 
 known that when the sulphuret was produced by exposure of 
 hydrated oxide of iron to the action of sulphuretted hydrogen, 
 mixed with coal-gas, the re-oxidation of the iron might not be 
 prevented by cyanogen, compounds of ammonia, and tarry matter 
 which would be mixed with it: — Seld, that a patent might bo 
 had for re-oxidising the iron by exposure to the air after it hid 
 been used in the purification of coal-gas. (5 H. & N. 312 ; 29 
 L. J., Ex. 409.) 
 
 (s) MOETON V. MiDDLETON. [1863] 
 
 Action for the infringement of a patent for improvements in the 
 construction of pillars, &c., applicable to the construction of gate-' 
 posts, &c. Lord President : " Although the object of other pillars 
 that have been used may have been the same as the object con- 
 templated by this one, yet, if the invention here in a great and 
 material degree attains that object better, then we must hold that 
 there is novelty in it, and that it might be protected by a patent." 
 (1 Or. S., Srd Series, 722.) 
 
 (t) Ealston v. Smith. H. L. [1865] 
 
 It is not every useful discovery that can be made the subject of 
 a patent, but the words "new manufacture," in 21 Jac. 1, c. 3, 
 will comprehend not only a production, but a means of production. 
 It will comprehend a new machine, or a new combination of 
 machinery, a new process, or an improvement of an old process 
 (11 H. L. Gas. 223; 13 L. T. Bep., N. S. 1; 35 L. J., C. P. 49; 
 20 G. B., N. S. 28.) 
 
 (**) Arnold v. Beadburt. [1871] 
 
 On a motion for issues the defendants objected that the patent 
 was bad for want of subject-matter. Hatherley, L.G. : " If he 
 (the patentee) produces a machine and dispenses with a process 
 which is avowed to be injurious, I cannot, in the absence of 
 evidence, take on myself to say that that would not be the 
 subject-matter of a patent." (L. B. 6 CJi. App. 706, at p. 714 ) 
 
 (u) Cannington v. Nuttall. H. L. [1871] 
 
 The appellants were the assignees of a patent for " improve- 
 ments in the manufacture of glass." All the principles upon 
 which the patentee's method was based were well known, but their 
 combination was both new and useful : — Held, that the combina- 
 tion was the subject-matter of a valid patent. (L. Bep., 5 H. L. 
 205 ; 40 L. J., Gh. 739.) Lord Westbury : " Now, the only thing 
 that appears to have been regarded by the patentee, Mr. Pooheron, 
 as a new discovery, was the application of the external air to the 
 
 2 K 2 
 
500 SUBJECT MATTEE: 
 
 sides of the tank. My lords, it was a discovery certainly, tut it 
 was a thing for which, independently of the other apparatus, 
 probably no patent could have been obtained. I may construct 
 an apparatus, and may, in point of fact, make the merit and 
 benefit of that apparatus depend upon the application of some 
 dynamic force which is perfectly well known, but my invention 
 consists in the construction of the apparatus in such a manner as 
 to bring some natural agency or natural power to bear upon and 
 effect the object which I desire to effect, and that I do by means 
 of an apparatus constructed so as to bring into action that dynamic 
 power. . . . Now here the refrigerating effect of the air upon the 
 sides of the tank was not a thing for which a patent could be 
 obtained; but an apparatus so constructed as to bring into 
 operation that particular property of the external atmospheric 
 air, so as to produce a most useful effect, constitutes an invention 
 to which the merit attaches of novelty, and for which a patent 
 may be taken out." (L. Hep., 5 H. L. 225.) 
 
 (v) GosNELL V. Bishop. C. A. [1888] 
 
 Patent for improvements in stretchers for trousers held good. 
 Bowen, L.J. : " Where there has been for some time a long 
 unsatisfied demand, and then suddenly an article springs into 
 existence and satisfies it, the length of time during which the 
 demand has remained uncomplied with is matter from which it 
 may be inferred that it is ingenuity alone which has enabled the 
 inventor to surmount the obstacle that otherwise would seem, 
 from the mere existence of the long unsatisfied demand, to have 
 existed somewhere or in some shape. But it may be that the 
 demand itself is quite new, and that the novelty of the demand 
 has produced immediately, and without any operation of ingenuity, 
 an obvious article to satisfy it." (6 0. B. 151, at p. 158.) 
 
 (mj) Thomson v. Batty. [1889] 
 
 The partially filling a bowl with viscous fluid for the purpose 
 of steadying a compass card might by itself properly be subject- 
 matter for a patent. (6 0. B. 96.) 
 
 (m*) Voewerk & Sons v. Evans. C. A. [1890] 
 
 Kekewich, J. : " In examining any subject-matter of patent 
 you must regard it with reference either to the thing that 
 produces it or the thing which it produces. You must regard 
 it either as a machine that will produce some work or you must 
 regard it as the production of some machine," (7 0. B. 176, at 
 p. 171.) Doubted by the Court of Appeal, because if there is a 
 new thing produced and that is useful and complies with other 
 requirements there may be a good patent for that. (7 0. B. 265.) 
 
 Combination. 
 
 (x) BouLTON V. Bull. [1795] 
 
 Buller, J., said : " Mechanical and chemical discoveries all 
 come within the description of manufactures ; and it is no ob- 
 
Combination. 501 
 
 jection to either of them that the articles of which they are 
 composed were known and were in use before, provided the com- 
 pound article, which is the subject of the invention, is new." 
 (2 H. Bl. 487.) 
 
 («/) HuDDART V. Geimshaw. K P. [1803] 
 
 Lord EUenborough : " I suppose it will not now be disputed that 
 a new combination of old materials, so as to produce a new effect, 
 may be the subject of a patent." (Bav. P. G. 267.) 
 
 (z) Hill «. Thompson. Ch. [1817] 
 
 Lord Eldon : " There may be a valid patent for a new com- 
 bination of materials previously in use for the same purpose, 
 or for a new method of applying such materials." (1 Web. P. C. 
 237.) 
 
 (a) Beunton v. Hawkes. [1821] 
 
 A machine, each part of which was in use before, but in which 
 the combination of the different parts is new, and a new result 
 produced, is good subject-matter for a patent. (4 B. & Aid. 650.) 
 
 (6) Lewis «. Davis. N. P. [1829] 
 
 The shearing of cloth from list to list by shears, and the shearing 
 it from end to end by means of rotary cutters were known and in 
 use before the date of the patent. The patentee constructed a 
 machine to shear from list to list by means of rotary cutters, and 
 this was held to be a new manufacture within the statute of James, 
 and a sufBcient invention to sustain a patent. (3 Gar. & P. 502 ; 
 1 Weh. P. C. 488 ; 1 Car^. P. C. 471.) 
 
 (c) Saunders v. Aston. [1832] 
 
 Patent for " certain improvements in constructing or making 
 buttons." The specification stated the improvements to consist in 
 the substitution of a flexible material for metal shanks on buttons. 
 It then described the modes in which this material might be fixed 
 to the button. Several of these modes were old, but one method, 
 which consisted in the use of a metal collet or ring with teeth, 
 was new. Littledale, J., agreeing with the rest of the Court, 
 said : " Neither the button nor the flexible shaft was new, and 
 they did not, by merely being put together, constitute such an 
 invention as could support this patent. It is contended that the 
 operation of the collet, under the present patent, is new ; but that 
 is not stated in the specification as the object of the invention, and 
 it is in fact only one mode of carrying it into effect ; it appears on 
 the plaintiff's case that there were other ways of producing the 
 same result." (3 B. & Ad. 881 ; 1 L. J., K. B. 265 ; 1 Carp. P. G. 
 510.) 
 
 (d) Carpentee v. Smith. N. P. [1841] 
 
 There may be a valid patent for a new and improved combination 
 of mechanical parts which are already known in combination. 
 (1 Weh. P. G. 538.) 
 
502 SUBJECT MATTER: 
 
 ,(e) Ceane' v. Price. [1842] , 
 
 Patent for " an improvement in the manufacture of iron." Tlie 
 invention consisted in the application of anthracite, or stone coal, 
 combined with a hot air blast, in the smelting or manufacture of 
 iron from ironstone, mine, or ore. The patentee in his claim said ,: 
 "I do not, claim the using of a hot air blast separately in the 
 smelting and manufacture of iron as of my invention, when uncom- 
 
 ibined with the application of anthracite, or stone coal, and culm ; 
 nor do I claim the application of anthracite, or stone coal, in tTie 
 manufacture or smelting of iron, when uncorabined with the using 
 of hot air blast. But what I do claim as my invention is, the 
 application of anthracite, or stone coal, and culm, combined with 
 the using of hot air blast in the smelting and manufacture of iron, 
 
 ■from ironstone, mine, or ore, as above described." The applica- 
 tion of a hot blast to the smelting of iron had previously been 
 patented by Neilson. Tindal, C.J., in delivering the judgment of 
 the Court said, the questicm is, "whether, admitting the using of 
 the hot air blast to have been known before in the manufacture of 
 iron with bituminous coal, and the use of anthracite, or stone coal, 
 ■to have been known'before in the manufacture of iron with cold 
 blast, but that the combination of the two together (the hot blast 
 and the anthracite) were not known to be combined before in the 
 manufacture of iron, whether such combination can be the subject 
 of a patent. 
 
 " We are of opinion, that if the result produced by such a com- 
 bination is either a new article, or a better article, or a cheaper 
 article to the public, than that produced before by the old method, 
 that such combination is an invention or manufacture intended by 
 the statute, and may well become the subject of a patent. Such 
 an assumed state of facts falls clearly within the principle exempli- 
 fied by Abbott, C.J., where he is determining what is or what is 
 not the subject of a patent, namely, it may, perhaps, extend to a 
 new process to be carried on by known implements or elements 
 acting upon known substances, and ultimately producing some 
 other known substance, but producing it in a cheaper or more 
 expeditious manner, or a better or more useful kind. And it falls, 
 also, within the doctrine laid down by Lord Eldon, that there may 
 be a valid patent for a new combination of materials previously in 
 use for the same purpose, or even for a new method of applying 
 such materials. But the specification must clearly express that it 
 is in respect of such new combination or application. 
 
 " There are numerous instances of patents ■which have been 
 granted, where the invention consisted in no more than in the use 
 of things already known, and acting with them in a manner already 
 known, and producing effects already known, but producing those 
 effects so as to be more economically or beneficially enjoyed by the 
 public." Eeferring to the validity of a patent for an improve- 
 ment on a prior patent, his lordship said, the defendants contend 
 " that the taking out of a patent for an invention, which invention 
 cannot be used or enjoyed by the public except by moans of the 
 former invention of another person, which former invention is itself 
 
Gomhination. 503 
 
 the subject-iQatter of a patent still in force, is void By law. 
 Undoubtedly, if tie second patent claims, as part of the invention 
 described in it, that which had been the subject-matter of a patent 
 then in force, it would be void, on the double ground that it 
 claimed that which was not new( which indeed would equally be 
 the case if the former patent had expired), and also that it would 
 be an infiingement of, and inconsistent with, a former grant of the 
 king still in force, which latter consideration aloae would make a 
 new grant void. But in this case there is an express disclaimer of 
 any part of the invention extending to the use of the hot air blast 
 which was covered by Neilson's patent, the specification describing 
 that the application of the hot air blast was well understood and 
 extensively applied in many places where ordinary fuel is em- 
 ployed. The validity, therefore, of the plaintiff's patent cannot 
 
 be impeached on either of the grounds above adverted to 
 
 Now it is further argued that, in point of law, no patent can be 
 taken out which includes the subject-matter of a patent still 
 running or in force. No authority was cited to support this propo- 
 sition And upon reason and principle there appears to be 
 
 no objection. The new patent, after the expiration of the old one, 
 will be free from every objection, and whilst the former exists, the 
 new patent can be legally used by the public by procuring a licence 
 from Neilson, or by purchasing the apparatus from him or- some of 
 his agents ; and the probability of the refusal of a licence to anyone 
 applying for it, is so extremely remote, that it cannot enter into 
 consideration as a ground of legal objection." The patent was 
 held to be good. (4 U. & G. 580; 5 Scott, N. B. 338; 12 L. J., 
 a p. 81 ; 1 Web. P. 0. 393 ; 2 Carp. P. G. 669.) 
 
 (/) Allen v. Eawson. [1845] 
 
 Where the use of soap and water in the process of felting, instead 
 of acidulated water, was known, and the use of rollers was also 
 known, it was held that a patent for the application of soap and 
 water in combination with rollers, was a good subject-matter for a 
 patent. (1 C. B. 551.) 
 
 ((?) BOVILL V. KJEYWORTH. [1857] 
 
 The plaintiffs invention consisted in exhausting the air from the 
 cases of millstones, combined with the application of a blast to the 
 grinding surfaces. The patentee specifically disclaimed the precise 
 details of carrying out his invention as described in his specification. 
 It was proved by the defendants that both the blast and the 
 exhaust had previously been Used separately in working mills. 
 I'he Court Held, that " the whole of the plaintiff's process, if the 
 combination be new, is certainly the subject of a patent." (7 E. & B. 
 725; 3 Jur.,N.S. 817.) 
 
 (h) Lister v. Leathee. [1858] 
 
 Lord Campbell, C. J., in delivering the judgment of the Court of 
 Queen's Bench, said : " If the combination, the subject of the 
 patent, was new and useful, though each of the parts which entered 
 
504 SUBJECT MATTEE : 
 
 into it were old, still tlie comliination might be tlie sulyect of a 
 
 valid patent A patent for a combination is not a claim tliat 
 
 each part thereof is new. On the contrary, each part may he old, 
 and yet a new and useful combination of such old parts may be 
 
 valid, as has been often decided A valid patent for an entire 
 
 combination for a process gives protection to each part thereof that 
 is new and material for that process, without any express claim of 
 particular parts, and notwithstanding that parts of the combination 
 are old." (8 E. & B. 1004 ; affirmed in Exchequer Chamber, 9,E.& 
 B. 1031 ; 27 L. J., Q. B. 295 ; 4 Jur., N. S. 947.) 
 
 («■) Potter v. Pare. [1860] 
 
 In an action for infringement of a patent for improvements in 
 spinning machinery, it appeared that the patentee had in a pre- 
 vious patent described a conical drum, which had turned out to he 
 in parts defective. The patentee alleged that he had cured these 
 defects, by employing a radiating apparatus combined with an 
 improved systein of curves, and contended that he might take out 
 a patent for the radiating apparatus, which he had in this way 
 made perfect : — Held, that as he had already made known the 
 principal part of the machine, he could not take out a fresh patent 
 for a combination, including that and the improvements, without 
 expressly stating that the patent was for a new combination only. 
 (2 B. & S. 216 (n.).) 
 
 (J) Morton v. Middleton. [1863] 
 
 , Lord President : " There can be no doubt as to the general law, 
 that there may be a new arrangement and combination of things 
 that were formerly in use, but which are to be so arranged in a 
 novel way as to produce either a new effect or a better effect than 
 before." (1 Cr. S., 3rd Series, 721.) 
 
 (_/*) FOXWELL V. BOSTOCK. [1864] 
 
 Lord Westbury said : " If a combination of machinery for 
 effecting certain results has previously existed, and is well known, 
 and an improvement is afterwards discovered, consisting, for 
 example, of the introduction of some new parts, or an altered 
 arrangement in some particulars of the existing constituent parts 
 of the machine, an improved arrangement or improved combination 
 may be patented." (12 W. B. 725.) 
 
 (h) Spencer v. Jack. [1864] 
 
 The jury having found that the invention, which was a com- 
 bination of things previously well known, was " a substantial 
 improvement " : — Seld, that the question whether it could be the 
 subject of a patent must be answered in the affirmative. (11 L. T. 
 Bep., N. S. 242.) 
 
 (J) Dangbrfield v. Jones. [1865] 
 
 Patent for " an improved mode of, and apparatus for, bending 
 wood for the handles of walking sticks, umbrella and parasol 
 
Combination. 505 
 
 sticks, and other purposes." The patentee, in his specification, 
 said, that after softening the end of the stick which is to be bent, 
 by placing it in moist sand, with the application of heat when 
 necessary, it is to be held securely in the jaws of a clamp or vice, and 
 the extremity of the stick then drawn rouud or bent over a tube or 
 ioUow mandrel, provided with an annular half-round recess. 
 Inside this tube or hollow mandrel a gas jet or burner is intro- 
 duced for imparting heat to the tube or mandrel, which heat is 
 transmitted to the stick from its being drawn in close contact 
 therewith. The stick is kept in this position by means of a band 
 of steel, which is bent over the stick to retain it in a bent position. 
 The patentee claimed " the application of a flame of gas or other 
 combustible fluid or liquid as described, for softening the fibres of 
 the wood while being bent in combination with a clamping 
 apparatus for securing the wood in its bent form until the fibres 
 are set, so that the hook may remain permanently as herein set 
 forth " : — Held, that this was a proper subject for a patent. Vice- 
 Chancellor Wood, in the course of his judgment, said : " If, having 
 a particular purpose in view, you take the general principles of 
 mechanics, and apply one or other of them to a manufacture to 
 which it has never been before applied, that is a sufficient ground 
 for taking out a patent, provided that the Court sees that that 
 which has been invented is new, desirable, and for the public 
 benefit." (13 L. T. Bep., N. S. 142.) 
 
 (m) Weight v. Hitchcock. [1870] 
 
 The plaintiff obtained a patent " for the invention of improve- 
 ments in the manufacture of frills or ruffles, and in the machinery 
 or apparatus employed therein." His specification described the 
 invention as relating to a peculiar manufacture of frills or ruffles, 
 and a peculiar kind of mechanism to be applied to a sewing 
 machine for producing the same, by which the fabric was folded, 
 or crimped by a reciprocating knife, and the folds stitched by the 
 sewing machine, so as to be kept permanently in their place. 
 Anterior to the date of the patent, frills or ruffles were made by 
 hand, the materials being folded by a knife, and then sewn. The 
 Court Held the plaintiff's invention to be a good subject-matter of 
 a patent. (L. Bep., 6 Mx. 37 ; 39 L. J., Ex. 97.) 
 
 (n) MuKEAT V. Clayton. [1872] 
 
 Bacon, V.-C. : " A combination of things not in themselves new, 
 ,but which combination is perfectly new in the form in which the 
 inventor has cast it, and producing new and more beneficial results, 
 may be the subject of a patent. (Huddart v. Grimshaw, Web. P. G. 
 85.) But I am aware of no case la which it has been held that 
 the mere arrangement of common elementary mechanical materials, 
 and the construction by means of such arrangement of a machine 
 which produces no other result than that which had been pre- 
 viously accomplished by other mechanical arrangements and con- 
 structions, would support a patent. If it were so, there would be 
 no protection to the public or to earlier patents against the inge- 
 
506 SUBJECT MAMEE : 
 
 niiity of any artizan who might have the skill to arrange the old 
 mechanism in a new shape, and thereby to appropriate to himself 
 the fruits of previous inventors in the proper sense of that term, 
 80 that the privilege and reward which the law only concedes to 
 art and wit and invention might be bestowed upon mere skill in 
 handicraft." (L. B., 7 Ch. 577.) James, L. J., in reversing this judg- 
 ment, said : " I find it very difficult to reconcile this proposition 
 with what has been said by many judges in many cases, and more 
 particularly in the case of Crane v. Price. Now, no doubt Orane v. 
 Price has been questioned, and if I may be permitted to say so, 
 with all respect to the very powerful tribunal which decided that 
 case, I have never been satisfied with the decision. That, how- 
 ever, was simply because I could not see how the word 'combination' 
 could be properly applied to the introduction of a particular kind 
 of fuel into a machine which had been patented for the use of every 
 kind of fuel in the making of iron ; and neither I nor, so far as I 
 am aware, any other judge has ever questioned the principles upon 
 which that' case was decided. . . . That being so, I cannot conout 
 with the Tice-Ohancellor iu saying that the patent of the plaintiff 
 was to be invalidated upon the principle which he has laid down, 
 because, if the evidence is to be believed, what the plaintiff has 
 done is, that he has produced a thing in a more expeditious manner, 
 in a more econoiuical manner, and of a better quality." (L. B., 
 7 Ch. 584 ; 20 W. B. 660.) 
 
 (o) Bamlett v. Pickslet. [1875] 
 
 The plaintiff's patent was for improvements in machines for 
 mowing, by which the cuttiag-knife might bo made to revolve 
 quicker for mowing grass than for cutting corn. The shaft which 
 drove the knife was mounted parallel to the axle of the wheels, 
 and on this axle were mounted toothed-wheels of different diame- 
 ters. The shaft could be moved longitudinally, so as, by the aid of 
 pinions, to be driven by the large or small wheel as required. 
 An identical arrangement of shaft and wheels had already been 
 used in haymaking for driving' the tossing-rakes faster or slower : 
 — Seld, that this was not a combination, although it was called a 
 combined reaping and mowing machine, but merely an application 
 of a known machine to an analogous purpose. Grove, J. : " Crane 
 V. Price has been cavilled at, and can only be upheld on the ground 
 that there a new product was produced of a different class and cha- 
 racter. Whether it is supportable on that ground ot not some learned 
 judges have doubted " (at p. 43). A patentee cannot make a 
 combination within the meaning of the patent law by calling it a 
 combination. A combination, in point of law, must be a com- 
 bination producing a new and Useful result. (Griff. 40.) 
 
 (p) BlNNEY V. Feldtman. H. L. [1871-5] 
 
 Where the invention claimed was " a packing (for joints of 
 engines) composed of dry powdered substances, combined with 
 braided, twisteil, or plaited fibrous material substantially as set 
 forth," it was Held, that as the use of fibrous material for packing 
 
Comhination. 507 
 
 was not new, and the use of mineral lubricants for sucli a purpose 
 ■jvas not new, it could not be the subject of a patent to use fibrous 
 strands, or any other fabric combined with mineral lubricant, in 
 the sense of mainly using the two things together. And if the 
 claim is limited by the words " substantially as set forth " to a 
 particular process of manufacture, by which the two materials are 
 combined, the patentee cannot thereby prevent a conjoint use of 
 the two materials together, which will result in the ordinary course 
 of use in producing the same thing which the patentee claims to 
 produce intentionally. {Griff, p. 49.) 
 
 (2) HiNKS V. Safety Lighting Company. M. E. [1876] 
 
 It was contended that a patent for a lamp was anticipated by a 
 prior patent for a lamp, the only material diiference between the 
 two being that one used a round wick and the other a flat wick. 
 Jessel, M.E. : " On the one hand it was said you can never support 
 a patent by substituting a round wick for a flat wick, as there is no 
 invention in that. On the other hand it was said. Why not ? If 
 it is a combination patent, the very essence of a combination patent 
 is that it is a new combination of known parts, and, in fact, very 
 few machines are now invented which contain any new part. As 
 a general rule, every machine invented is made up of parts which 
 are previously known. A new part of a machine is very uncom- 
 mon Indeed ; consequently that is an objection which, per se, is not 
 of great weight. But, like every combination which is new, it 
 must have merit, and now how is a judge to apportion the merit ? 
 I do not know. As far as I can ascertain from the authorities, the 
 merit very much depends on the result produced. Where a slight 
 alteration in a combination turns that which was practically useless 
 before into that which is very useful and very important, judges 
 have considered that, though the invention was small, yet the 
 result was so great as fairly to be the subject of a patent ; and, 
 as far as a rough test goes, I know of no better." (4 Ch. D. 615.) 
 
 (r) Clark v. Adie (First App.) H. L. [1877] 
 
 Lord Blackburn, speaking of the case of Crane v. Price (4 
 M. & Gr. 580), said : " That was a case where a hot blast, which 
 had been applied as a means of melting iron by the use of ordinary 
 coal, was first applied to melting iron in Wales by anthracite coal, 
 and thereby produced an enormous benefit, for it utilized the whole 
 of the great Welsh coal-field. In that case there was a considerable 
 difficulty in sajdng whether the patent was good or not, but it was 
 held to be good. That case has gone as near the extreme end as 
 any decided case has gone ; it shows that an old combination, if 
 producing a new and beneficial result, may be the subject of a 
 patent. Whether it is so or not must depend upon the facts of the 
 particular case ; and again, whether it is properly described or not 
 depends upon the facts of the particular case. In those cases there 
 is great diflioulty in saying how much must be described in the 
 specification, and to what extent the combination must be de- 
 scribed." (2 App. Gas. 335.) 
 
o08 SUBJECT MATTER : 
 
 (s) Sykes v. Howaeth. Pry, J. [1879] 
 
 Machines for carding wool, &c., consisted, prior to tte invention 
 of the plaintiff, of a series of large cylinders on which smaller 
 cylinders revolved, the last of the series of smaller cylinders termed 
 a " fancy roller," being used to raise the fibre on the surface of the 
 larger roller. The roUers were covered with " cards " (strips of 
 leather thickly studded with short wires). These cards were 
 cleaned by means of a hand-scraper, an objectionable method, 
 inasmuch as from the fact of the person using the scraper having 
 to stand at a side of the machine, and thus being unable to draw 
 the scraper in an exact line with the gates of the cards (passages 
 between the wires), the cards were liable to be injured. The 
 plaintiff obtained a grant of letters patent for improvements in 
 fancy rollers, by the introduction of wide spaces between the cards, 
 which produced an exhaust current of air, and made the rollers 
 operate in their function as fancy rollers. In addition to this, the 
 fancy rollers were applicable and employed for cleaning the other 
 card-covered cylinders :— Held, on the principle of Murray v. Clayton 
 (L. B., 7 Gh. 577), that the improvements were a proper subject- 
 matter for a pateat. (12 Ch. D. 826.) 
 
 (t) Hayward v. Hamilton. C. A. [1879-1881] 
 
 The plaintiff was the proprietor of a patent for improvements in 
 pavement lights. In his specification he stated that he glazed the 
 frame of the pavement light with glass of a prism-like form under- 
 neath, resembling, to some extent, the glasses which are inserted 
 into ships' decks to give light below, but diifering entirely in the 
 form and arrangement of the prism, in order that the light might 
 be thrown forward in one direction. The jury found that it was 
 not a new thing to form and arrange a prism so that the light 
 might be thrown forward in one direction, but that it was a new 
 thing to glaze lights as the plaintiff had done : — Seld, that as the 
 plaintiff had not tried to patent his idea, but had pointed out a 
 combination by which it could be carried into execution, such com- 
 bination was a proper subject of a patent. Per Brett, L.J. : " A 
 point was raised and discussed, which for a time did seem to me 
 to present a difficulty, namely, whether, although this was new 
 and useful, it could be said to be an invention. ... I did not 
 recollect of myself any case in which, where a thing had been 
 pronounced to be new and useful, the question of whether it 
 was an invention had been ever discussed, or even left to a jury 
 for instance. It seemed to me, in all previous cases, it had been 
 taken for granted, that if the thing were new and useful, there 
 must have been an invention in order to arrive at a thing that 
 can be so described ; and I should say, that in nine hundred and 
 ninety-nine cases out of a thousand, that must be so. I say, if 
 the thing is new and useful, it is impossible to suppose there is 
 not sufficient to make an invention ; but I do not think, as a 
 matter of law, that could be predicated as an absolute rule of 
 law ; because I think it is possible, although a thing were new 
 
Combination. 509 
 
 and useful, it might be, under certain circumstances, that there 
 was no invention in it." (Griff. 121, at p. 121.) (But see Blahey 
 V. Latham, p. 510 (z).) 
 
 (m) Eeynolds v. Amos. [1886] 
 
 A patentee claimed, in the manufacture of ensilage, a combination 
 of chains and cross-beams with means for anchoring or securing 
 the chains, by which fodder might be compressed and retained in 
 the compressed state. Bacon, V.-O. : " Its novelty is established 
 beyond all doubt ; its utility is proved, among many other things, 
 by the defendants themselves who have adopted it ; that it is 
 cheaper, the evidence enables me to say. So that if I take what 
 are upon authority the unquestionable requisites necessary to 
 sustain a patent, I find that it is new, . . . that it is better than 
 any other as the witnesses have proved, and that it is beyond 
 all question very much cheaper. . . . There is no novelty in a 
 chain ; there is no novelty in pinning a chain so that it cannot 
 shift its position ; there is no novelty in shortening the chain by 
 means of a pin ; but the man who invented this mode of dealing 
 with the chain for the purpose of manufacturing ensilage, says 
 that he is entitled to a patent, and I have not heard a word of 
 argument nor of authority that should induce me to doubt that 
 that is the plain law." {Griff. 201 ; 3 0. iJ. 215, at p. 219). 
 
 («) Edison and Swan United Electric Company v. Woodhouse and 
 Eawson (No. 1). 0. A. [1886] 
 
 It is usually true to say that the mere change of size of a part 
 •of a combination cannot constitute a new manufacture so as to be 
 good subject-matter; but where a filament was substituted for a, 
 rod with the definite purpose of making a physical law subserve 
 the end in view, and the filament produced a result which the rod 
 could not : — Held, that the substitution was good subject-matter. 
 The introduction into an old combination of a new shape of one of 
 the old elements of that combination, which invokes a law of nature 
 otherwise left on one side, may be the subject of a patent. (4 
 0. B. 79.) 
 
 (w) MosELEY V. ViCTOKiA Edbber Company. [1887] 
 
 The plaintiff's invention consisted in a new combination of old 
 processes for the production of designs upon waterproof fabrics, 
 and included an application of farina for the purpose of fixing 
 or absorbing colouring matter which was previously unknown. 
 Held, to be good subject-matter. (4 0. B. 241.) 
 
 (x) EowcLiFFE V. Longford Wire Company. [1887] 
 
 In an action for infringement of a patent for improvements in 
 frames for woven or elastic wire-web mattresses, it appeared that 
 the framework claimed was substantially that of the old four-post 
 bedstead, and differed from it only (1) in not having any legs or 
 posts ; (2) in having the transverse sliding-piece on the top of the 
 
510 SUBJECT MATTEE: 
 
 sides instead of in grooves along the sides ; and (3) in haTing the 
 foot and head raised above instead of being flush with the sides : — 
 Held, that the alleged invention was not subject-matter for a patent, 
 and had been anticipated. (4 0. B. 281.) 
 
 (y) Boyd v. Horrocks. [1888] 
 
 The plaintiif 's patent was for improvements in machinery for 
 winding, doubling and twisting yarn or thread. Held, to be 
 good subject-matter, as being " a new method of adapting in a 
 practical and useful fcjrm something well known by itself with 
 something equally well known by itself, but so as in the combi- 
 nation to make something new and useful." (5 0. H. 657 at p. 578.) 
 The judgment was reversed on another ground. (6 0. B. 162.) 
 
 (z) Blaket v. Latham. C. A. [1889] 
 
 Per Cotton, L.J. . " We were much pressed with two cases, one 
 of which was Hayward v, Hamilton. ... I doubted about it for a 
 considerable time, and I do not agree with all that the Master of 
 the EoUs says there ; but I pointed out that there was invention 
 in that case." See p. 522 (j). (6 0. B. 184, at p. 188.) 
 
 (a) Edison and Swan Electric Light Company v. Holland. C. A. 
 [1889] 
 
 The plaintiffs' second claim was for the combination of a carbon 
 filament within a receiver made entirely of glass, through which 
 the leading wires pass, and from which receiver the air is ex- 
 hausted for the purposes set forth. The patent had already been 
 before the Court. Held, that the questions whether this claim 
 was too wide or was properly subject-matter were questions' 
 depending partly on fact, and that it was not too wide and was 
 good subject-matter. (6 0. B. 243.) 
 
 (6) Thomson v. Ameeican Beaided Wire Company. H. L. [1889] 
 
 In an action for infringement of a patent for improvements in 
 bustles or dress improvers, it appeared that the patentee's bustle 
 was composed of tubular sections of braided wire, the ends of which 
 were secured by clamping as described, and that the bustle was 
 thereby rendered very light, and was a considerable improvement, 
 as evidenced by the public demand. It was shown that bustles 
 had long been made of horsehair, whalebone, and other elastic 
 materials ; that prior patents had been granted to Jenkins for 
 pillows and cushions made of braided wire; and to Lake for 
 making pillows, &c., from strands of wire, woven or plaited into the 
 form of a cylinder ; and, in the Court of Appeal, further evidence 
 was admitted to show that soft wire had been braided and used in 
 tubular sections for various articles : — Held, by the Court of 
 Appeal and the House of Lords (Lords Watson, Herschell, and 
 Maonaghten, Halsbury, L.C., and Fitzgerald, L., diss.), that the 
 invention was good subject-matter for a patent. Herschell, L. : 
 " It is clear that no such bustle had ever been made before the 
 date of the patent, and that as soon as this bustle became known 
 
Process. 511 
 
 there was a large domand for it. . . . This is certainly a fact 
 to which some weight may be attributed. Apart from that, 
 howeYer, the mode in which the tube of braided wire is made 
 available as a bustle, by the use of clamps applied and fixed in 
 the manner described, appears to me to be simple and efficient, 
 and not so obvious as to occur to every one contemplating the use 
 of braided wire for the purpose of a bustle. The result is a 
 complete article, light, effective, not likely to get out of order, 
 and capable of being manufactured, and therefore suld cheaply. 
 And I am unable to say, that to produce a new thing combining 
 these qualities, required no invention. ... If the demand of 
 the public for a particular article of dress be better met by a 
 new combination than it has been by the articles previously in 
 use, and if this new combination, though its component parts be 
 not new, required some exercise of the inventive faculty to 
 produce it, I think it can be protected by a patent, though it 
 may be impos.sible to say that the invention is important or 
 necessary for the public good." (6 0. B. 518, at p. 628.) 
 
 (c) Williams v. Nye. C. A. [1890] 
 
 In an action for infringement of a patent for an improved 
 mincing machine, it appeared that the plaintiif in his ujachine 
 had continued the shaft of the screw in Nye's machine and 
 utilised it for the purpose of filling. Nobody had previously 
 succeeded in producing a combined mincing and filling machine. 
 Meld, that there was not sufficient invention to support a patent. 
 Cotton, L.J. : " It is difficult to express in words with preeiseness 
 what is meant by ingenuity and what is meant by invention ; but 
 I express my opinion that in order to maintain a patent there 
 must be a substantial exercise of the inventive power or inventive 
 faculty." (7 0. B. 62, at p. 67.) 
 
 (c*) Newsum v. MiNN. [1890] 
 
 The plaintiff's patent was for improvements in printing machines, 
 the first and second claims being for the combination of certain 
 brackets and an intermediate frame cast together. The invention 
 was alleged to consist in the construction, which gave greater 
 stability, but held, that the first and second claims were for the 
 mere casting together of things well known and were not subject- 
 matter, and that therefore the patent was invalid. (7 0. B. 307). 
 
 Process. 
 
 (d) HOENELOWBR V. BoULTON. [1799] 
 
 A, patent was granted for a "method of lessening the con- 
 sumption of steam and fuel in fire-engines." The specification 
 stated that the "method consisted of the following principles" 
 (describing the mode in which those principles were applied to 
 the purposes of the invention) : — Held, tliat the invention was the 
 subject of a patent. (8 T. Bep. 95; Bav. P. G. 221 ; 1 Carp. P. G. 
 156.") Grose, J. : "I am inclined to think that a patent cannot be 
 
512 SUBJECT MATTER: 
 
 granted for a mere principle; but I think ttat, although in: 
 words the privilege granted is to exercise a method of making or 
 doing anything, yet if that thing is to be made or done by a 
 manufacture, and the mode of making that manufacture is de- 
 scribed, it then . becomes in effect (by whatever name it may be 
 called) not a patent for a mere principle, but for a manufacture of 
 the thing so made, and not merely for the principle upon which it 
 is made." (8 T. Bep. 105.) Lawrence, J., said: "Engine and 
 method mean the same thing, and may be the subject of a patent, 
 ' Method,' properly speaking, is only placing several things and 
 performing several operations in the most convenient order; but 
 it may signify a contrivance or device ; so may an engine, and 
 there I think it may answer the word 'method.' So 'principle' 
 may mean a mere elementary truth, but it may also mean con- 
 stituent parts ; and in effect the specification is this : ' the con- 
 trivance by which I lessen the consumption of steam consists in 
 the following principles — that is, constituent or elementary parts ; 
 a steam vessel, in which the powers of steam are to operate, to be 
 kept as hot as the steam by a case ; a distinct vessel to condense 
 the steam ; and pumps to draw off such vapour as is likely to 
 impede the motion of the fire-engine,' &o." (16. 106.) 
 
 (a) HuDDAET V. Geimshaw. N. p. [1803] 
 
 There may be several patents granted for several methods of 
 obtaining the same object, provided the methods of obtaining that 
 object are not identical. (1 Web P. C. 92.) 
 
 (6) Hall v. Jarvis. N. P. [1822] 
 
 The patent was granted for a '• method of improving every kind 
 of lace," &c. The invention consisted in causing lace to pass 
 through a flame of gas, in order to singe oif the projecting fibres, 
 and the specification described the means by which the invention 
 was to be performed. The patentee claimed the application of the 
 flame of inflammable gas to the purposes described in the specifi- 
 cation. It was proved that before the date of the patent, muslin 
 had been passed over rollers of heated iron, and that mits and 
 stockings had been passed through oil and alcohol flames for a 
 similar purpose. It was objected that the mere doing that with 
 the flame of gas which had long before been done by means of 
 other kinds of flame, was not such an invention as to constitute 
 the subject-matter of a patent. The patent was, however, held to 
 be good. (1 Web. P. 0. 100 ; 1 Garp. P. G. 423.) 
 
 (c) Jones v. Pearce. N. P. [1832] 
 
 The plaintiff's patent was for " a certain improvement or im- 
 provements on wheels for carriages." The patentee, in his specifi- 
 cation, said ; " I hereby claim as my invention, and declare that my 
 improvement or improvements on wheels fur carriages consist in 
 substituting suspending rods made of iron or other suitable metal 
 in lieu of spokes, by which suspending rods I hang or suspend the 
 weight or load from that part of the wheel which happens to be 
 
Process. 51S 
 
 uppermost, and prevent any support being given to the said weight 
 or load by the rods which happen to be immediately under the 
 axletree." At the trial the defendant's counsel contended that the 
 specification did not confine the claim to any particular mode of 
 constructing wheels on the suspension principle, but expressly 
 claimed the invention of the principle itself. ]:'atteson J., was of 
 opinion that, on the specification taken as a whole, the claim was 
 for the invention of a method of making wheels on the principle 
 of suspension, which method was described in the specification, 
 (1 Web. P. a 122 ; 1 Carp. P. 0. 624.) 
 
 («!) EussELL V. Cowley. [1835] 
 
 Before the patent, for the infringement of which the plaintiff 
 sued, iron tubes were made by drawing them through rollers, a 
 mandrel being placed inside the tube so as to form an internal 
 support. The patent in question was granted for a process of 
 manufacturing iron tubes by drawing them through fixed dies or 
 holes without the use of a mandrel. The tubes made by this 
 process were of greater length, were more uniform, and could be 
 manufactured at a cheaper rate than by the old process, 'i'he 
 Court held this to be a ^ood subject-matter for a patent. (1 C, M. 
 & B. 864; 1 Weh. P. C. 463; 1 Garp. P. G. 557; 16 Bep. Arts., 
 N. S. 116.) 
 
 (e) Walton v. Potter. N. P. [1841] 
 
 Tindal, C.J. ; " There can be no doubt whatever that, although 
 one man has obtained a patent for a given object, there are many 
 modes still open for other men of ingenuity to obtain a patent for 
 the same object ; there may be many roads leading to one place, 
 and if a man has, by dint of his own genius and discovery, after a 
 patent has been obtained, been able to give to the public, without 
 reference to the former one, or borrowing from the former one, a 
 new and superior mode of arriving at the same end, there can be 
 no objection to his taking out a patent for that purpose." (1 Weh. 
 P. G. 590.) 
 
 (/) Gibson v. Brand. [1842] 
 
 Tindal, C.J. : " The patent is taken out ' for a new or improved 
 process or manufacture of silk, and silk in combination with 
 certain other fibrous substances ; ' taken out, therefore, strictly for 
 a process. On the present occasion it is not necessary to go into 
 the question (upon the view I take of this specification), whether a 
 patent can be granted for a process, in the strict and proper sense 
 of that term, or not. Undoubtedly there is a very strong reason to 
 suppose, if the specification is carefully and properly prepared, so 
 as to point out, with great distinctness and minuteness, what the 
 process is, that such a patent may be good in law." ( I Web. P. G. 
 633.) Erskine, J. : " Although it may be true, that a party may 
 have a patent for an improved process, under circumstances which 
 would show that the improvement in the process really amounted 
 to a new invention, and a new manufacture, within the terms 
 
 2 L 
 
514 SUBJECT MATTER: 
 
 of the Act of Parliament, I think the evidence in this case 
 does not show, that here there has been such an improvement." 
 (16. 638.) 
 
 (g) Helliwell v. Deaeman. [About 1842] 
 
 The object of the plaintiff's invention was the rendering fabrics 
 waterproof, but at the same time leaving such fabrics pervious to 
 air. Before the plaintiff's patent a solution of alum and soap was 
 made, and the fabric to be rendered waterproof was immersed 
 therein. By this means a waterproof surface was produced on the 
 fabric, but it was not of a lasting nature : it wore off. According 
 to the plaintiff's invention, the fabric was immersed first in a 
 mixture of a solution of alum with some carbonate of lime, and 
 then in a solution of soap. The effect was, that by the fi.rst 
 immersion every fibre became impregnated with the alum, the 
 sulphuric acid of the alum being neutralized by the carbonate of 
 lime, and by the second immersion the oily quality rendering it 
 repellant of water was given to every fibre, so that every fibre 
 was rendered waterproof instead of the surface only; but the 
 whole fabric continued pervious to air : — Held, that this was such 
 a change in the modus operandi as to constitute a new manu- 
 facture. (1 Web. P. a 401 (n).) 
 
 (Ji) Stevens v. Keating. N. P. [1847] 
 
 Pollock, C.B. : " The word ' manufacture ' is introduced, and 
 all patents must be for a manufacture. The real invention may 
 be not so much for the thing when produced, as for the mode 
 in which it is produced; and its novelty may consist, not so 
 much in its existence as a new substance, as in its being an old 
 substance, but produced by a different process. In one sense, an 
 old substance produced by a new process is a new manufacture ; 
 of that there cannot be a doubt; and therefore, although the 
 language of the Act has been said to apply only to manufactures 
 and not to processes, when you come to examine it, either literally 
 or even strictly, it appears to me the expression ' manufacture ' is 
 free from objection, because, though an old thing, if made in a 
 new way, the very making of it in a new way makes it a new 
 manufacture. Therefore, although I think this is a patent for the 
 process rather than the product, I think it may be a patent for the 
 product." (2 Web. P. G. 182.) 
 
 (i) Wallington v. Dale. [1852] 
 
 Previous to the plaintiff's patent being granted, gelatine was 
 obtained by submitting large pieces of hides to the action of 
 caustic alkali, or by reducing them to pulp in a paper machine, and 
 employing blood to purify the product. The invention claimed 
 consisted in cutting the hides into shavings, thin slices, or films, 
 whereby the use of blood in the process of purification became 
 unnecessary : — Held, that the invention was the subject-matter of a 
 patent. (7 Exch. 888 ; 23 L. J., Ex. 49.) 
 
Process. 515 
 
 (/) Booth v. Kbnnaed. [1856] 
 
 Patent for " improvements in tlie manufacture of gas." The 
 patentee, in his specification, said : " Hitherto in manufacturing 
 gas from oUs, oily or resinous matter, it has been usual to go 
 through the costly process of obtaining the oils, &c., from seeds 
 and other substances, and to use the same in a fluid or semifluid 
 state .... Now, my invention consists in the direct use of 
 seeds, leaves, flowers, branches, nuts, fruits, and other substances, 
 and matters containing oil or oily or resinous matter, or other 
 
 matter useful in the manufacture of vegetable gas I 
 
 claim for makino; gas direct from seeds and matters herein named, 
 instead of making it from oils, resins, and gums, previously 
 extracted from such substances : " — Held, that assuming the 
 invention to be new, it was a good subject-matter for a patent. 
 (1 Hurl. & N. 527 ; 26 L. J., Ex. 23 ; 3 Jur., N. S. 21.) The patent 
 was afterwards set aside for want of novelty. (2 Hurl. & JV. 84 ; 
 26 L. J., Ex. 306.) 
 
 (k) Bewley «. Hancock. [1856] 
 
 Lord Cranworth : " A discovery that the mixture of two or 
 more simple substances, in certain definite proportions, will form 
 a compound substance valuable for medical or other qualities, 
 would afford a good ground for a patent. A discovery of some 
 machinery, whei'eby such a mixture may be more quickly or more 
 effectually accomplished, might be the foundation of another 
 patent." (6 De G., M. & G. 402.) 
 
 (Z) BoviLL V. Pimm. [1856] 
 
 Where the subject of an invention is not new, any patent taken 
 out for a method of performing the operation is substantially 
 confined to that method, and cannot be extended to other methods 
 obviously different, because they involve some common principle 
 applied to the common object, and may apparently be described by 
 the same general phrase. (11 Exch. 739.) 
 
 (to) Bovill v. Keyworth. [1857] 
 
 If the specification of a patent does not point out the mode by 
 which a patented process is to be performed, so as to accomplish 
 the object in view, it will be a statement of principle only, and the 
 patent will be invalid. (7 E. &. B. 735.) 
 
 (n) HiGGS V. Goodwin. [1858] 
 
 The invention for which the patent was granted was " treating 
 chemically the collected contents of sewers and drains in cities, 
 towns, and villages, so that the same may be applicable to 
 agricultural and other useful purposes." In the specification 
 the patentee said : " For the purpose of precipitating the animal 
 and vegetable matter contained in the sewage water, I prefer to 
 employ hydrate of lime, commonly termed ' slacked lime.' . . . 
 What I claim as my invention is, the precipitation of animal and 
 
 2 L 2 
 
516 SUBJECT MATTER: 
 
 vegetable matter from sewage water "bj means of the chemical 
 agent hereinbefore described." Lord Campbell, O.J., said : " It 
 seems to me that the invention of the plaintiif is a swbject for a 
 patent, as the invention was for producing an article of com- 
 mercial profit." (El. Bl. & El. 529 ; 5 Jur., N. S. 97 ; 27 L. J., 
 Q. B. 421.) 
 
 (o) Hills v. London Gas Light Company. [1860] 
 
 An invention consisted in the purification of coal gas by 
 employing the hydrated oxides of iron to remove the sulphuretted 
 hydrogen from the gas. On an action for the infringement of a 
 patent for this invention, it was contended by the defendants that 
 this was not the subject of a patent. Baron Bramwell, delivering 
 the judgment of the Court, said : " If a man were to say ' I claim 
 the use of hydrated oxide of iron for the purification of coal gas,' 
 without saying how it is to be applied, it is possible the objection 
 might be well founded ; but here the plaintiff says, ' I claim it in 
 the manufacture of gas in the way I have described,' and he shows 
 how it may be used. Therefore this objection fails." (6 Eurl. & N. 
 312 ; 29 L. J., Ex. 409.) 
 
 {p) Young v. Feenie. [1864] 
 
 Vice-Chancellor Sir John Stuart said : " What the law looks to 
 is the inventor and discoverer who finds out and introduces a 
 manufacture which supplies the market for useful and economical 
 purposes with an article which was previously little more than the 
 ornament of a museum. It has been established to my satisfaction, 
 by the evidence in this cause, that the plaintiff Young is an 
 inventor of this class, and that his patent is entitled to the 
 protection of the law. I find that he has ascertained, by a course 
 of laborious experiments, a particular class of materials among 
 many, and a particular process among many, which has enabled 
 him to create and introduce to the public a useful manufacture, 
 which amply supplies the market with that which, until the use of 
 the materials and process, and temperature indicated by him, had 
 never been supplied for commercial purposes. At the date of his 
 patent something remained to be ascertained, which was necessary 
 for the useful application of the chemical discovery of paraffine, 
 and paraffine oils. This brings it within the principle stated by 
 the Lord Chancellor in the late case of Hills v. Evans. The 
 manufacture, with the materials and process indicated by him, 
 according to the sense in which I understand the word 'manu- 
 facture ' to be used in the statute, was a new manufacture, not in 
 use at the date of his patent." (4 Oiff. 611 ; 10 Jur., N. S. 936 ; 
 12 W. B. 903 ; 10 L. T, Sep., N. S. 865.) 
 
 (g) Curtis v. Platt. [1864] 
 
 Where an invention consists of the discovery of particular means 
 for attaining a result, which result is already perfectly well 
 known, the invention is only for the means ; and the invention of 
 one set of particular means does not interfere with the invention of 
 
Process. 517 
 
 another set of means to tlie same end, provided that the two sets of 
 means are distinct, and the latter does not involve a colourahle 
 imitation of the former, or an incorporation of the former, with 
 additions. (11 L. T. Bep., N. S. 245 ; 3 Gh. D. 138 (n).) 
 
 (»■) Newall©. Elliott. [1864] 
 
 The plaintiff obtained a patent for " improvements in apparatus 
 employed in laying down submarine electric telegraph wires," 
 which he effected by a combination of a wire or cable round a 
 cone of supports, placed cylindrically outside the coil, and the use 
 of rings in combination with them : — Held, to be a good subject 
 for a patent. (10 Jur., N. S. 954 ; 13 W. B. 11 ; 10 L. T. Ben., 
 N. S. 792.) 
 
 Bramwell, B., said : " Two other matters remain. One is, the 
 point that was pressed by Mr. Cleasby, but which I confess I 
 have considerable difficulty in understanding, that this is not 
 the subject of a patent, because the thing is not prepared and 
 vendible — because, for the convenience of buyer and seller, instead 
 of being ready made and afterwards fitted up in the ship, it is 
 fitted into the ship by the owner of the ship, or the user of the 
 ship, when he uses it. I confess I am unable to understand that. 
 It seems to me to be an argument equally good to say that you 
 could not have a patent for a smoke-jack, because the size of the 
 smoke-jack depends upon the size of the chimney, and because it 
 is more convenient that it should be put up by a country smith." 
 (10 Jur., N. S. 959.) 
 
 (s) Simpson v. Holliday. H. L. [1866] 
 
 Patent for " improvements in the preparation of red and purple 
 dyes." The specification thus declares the nature of the invention : 
 " I mix aniline with dry arsenic acid, and allow the mixture to 
 stand for some time ; or I accelerate the operation by heating it to, 
 or near to, its boUing point, until it assumes a rich purple colour." 
 The patentee claimed " the manufacture or preparation of red and 
 purple dyes, by treating aniline dyes with arsenic acid, as herein- 
 before described." Chelmsford, L.O., said : " There is nothing upon 
 the face of the specification to show that the invention described is 
 not in every part of it the subject of a patent." (L. B., 1 H. L. 
 815 ; 35 L. J., Ch. 811.) 
 
 {t) Bailey v. Eobeeton. H. L. [1878] 
 
 A patent may be obtained for the use of a solution of one or more 
 chemical substances for a particular purpose, without confining 
 the claim to any particular mode of use or application. {Per Lord 
 Cairns, L.C., 3 App. Cas. 1064; and per Lord Blackburn, lb. 1077.) 
 
 (m) Badische Aniliu USD Soda Fabeik v. Levinstein. H. L. 
 [1887] 
 "Where a patent is taken out for a process fur arriving at a known 
 result, any other person may take out a patent for another process, 
 
518 SUBJECT MATTEE: 
 
 or may use another process, without any infringement of the first 
 patent. But where a patent is taken out for a new result, and there 
 is one process in the patent which is effectual for the purpose of 
 arriving at that new result at the time when the patent is taken 
 out, the patentee is entitled to protection against all other processes 
 for the same result. It is no objection to a patent to say that the 
 inventor only completed by one step the route to which chemical 
 discoveries had been tending without his aid. (24 Gh. D. 171 ; 12 
 App. 0. 710.) 
 
 (v') Babische Anilin und Soda Fabeik v. Dawson. [1889] 
 
 In an action for infringement of a patent for the preparation of 
 jellow colouring matters soluble in water and suitable for dyes, it 
 was shown that dinitronaphthol, which was known as Manchester 
 yellow, had long been in use, but that it was not very soluble in 
 water. In trying to correct this and other defects tlie patentee 
 discovered that by treating alpha naphthol with additional sul- 
 phuric acid, an acid was obtained which, when treated with nitric 
 acid, retained one or more of its sulpho groups. This product was 
 completely new, and no one had ever discovered before how to 
 procure a sulpho acid of alpha naphthol which kept one or more 
 of its sulpho groups under the action of nitric acid. The mode of 
 preparation was also new, and it was held, by Charles, J., that the 
 mode of preparation and production was just as much subject- 
 matter of a patent as the production of the sulpho acids of oxyazo- 
 naphthaline, which had already been held to be good subject-matter. 
 ((3 0. B. 387.) 
 
 Addition to a Icnown Machine or Process. 
 
 (w) Morris v. Branson. N. P. [1776] 
 
 An addition made to an old machine is a good subject-matter for 
 a patent. If it were the law that there could be no patent for an 
 addition, it would go to repeal almost every patent that was ever 
 granted. {Bull. N. P. 76 ; 1 Garp. P. C. 30; 1 Web. P. G. 51.) 
 
 (x) E. 1). Arkweight. Sci. Fac. [1785] 
 
 Buller, J., in addressing the jury, said : " In the case of an 
 invention, many parts of a machine may have been known before, 
 yet if there be anything material and new, which is an improve- 
 ment of the trade, that will be sufficient to support a patent ; but 
 whether it must be for the new addition only, or for the whole 
 machine, would be another (question." (1 Web. P. G. 71.) 
 
 (y) BouLTON V. Bull. [1795] 
 
 Buller, J., said : " That a patent for an addition or improvement 
 may be maintained, is a point which has never been directly 
 decided ; and Bircot's case, 8 Inst. 184, is an express authority 
 against it, which case was decided in the Exchequer Chamber. 
 "What were the particular facts of that case we are not informed, 
 and there seems to me to be more quaintness than solidity in the 
 
Addition to a known Machine or Process. 519 
 
 teason assigned, whicli is, tliat it was to put but a new button to 
 an old coat, and it is muoh easier to add than to invent. If the 
 button were new, I do not feel the weight of the objection that the 
 coat on which the button was to be put, was old. But in truth, 
 arts and sciences at that period were at so low an ebb, in com- 
 pariison with that point to which they have been since advanced, 
 and the effect and utility of improvemerjts so little known, that I 
 do not think that case ought to preclude the question. In later 
 times, whenever the point has arisen, the inclination of the Court 
 has been in favour of the patent for the improvement, and the 
 parties have acquiesced, where the objection might have been 
 brought directly before the Court. In Morris v. Branson, which 
 was tried at the sittings after Easter term 1776, the patent was for 
 making oilet holes, or net- work in silk, thread, cotton or worsted ; 
 and the defendant objected that it was not a new invention, it 
 being only an addition to the old stocking-frame. Lord Mansfield 
 sajd: ' After one of the former trials on this patent, I received a 
 very sensible letter from one of the gentlemen who was upon the 
 jury, on the subject whether on principles of public policy, there 
 could be a patent for an addition only. I paid great attention to 
 it, and mentioned it to all the judges. If the general point of law, 
 viz., that there can be no patent for an addition, be with the de- 
 fendant, that is open upon the record, and he may move in arrest 
 of judgment. But that objection would go to repeal almost every 
 patent that was ever granted.' There was a verdict for the plain- 
 tiff, with 600Z. damages, and no motion was made in arrest of 
 judgment. Though his lordship did not mention what were tho 
 opinions of the judges, or give any direct opinion himself, yet we 
 may safely collect that he thought, on great consideration, the 
 patent was good, and the defendant's counsel, though they had 
 made the objection at the trial, did not afterwards persist in it. 
 3inoe that time, it has been the generally received opinion in 
 Westminster Hall, that a patent for an addition is good. But then 
 it must be for the addition only, and not for the old machine too. 
 In Jessop's case, as quoted by my brother Adair, the patent was held 
 to be void because it extended to the whole watch, and the inven- 
 tion was of a particular movement only." (2 S. Bl. 489.) 
 
 (z) HORNBLOWEE V. BOULTON. [1799] 
 
 Grose, J. : "A doubt is entertained, whether there can be a 
 patent for an addition to an old manufacture. This doubt rests 
 altogether upon Bireot's case, 3 Inst. 184; and if that were to be 
 considered as law at this day, it would set aside many patents for 
 very ingenious inventions, in cases where the additions to manu- 
 factures before existing are much more valuable than the original 
 manufactures themselves. I shall content myself with referring to 
 what Lord Chief Justice Eyre said in this cause, in the Court of 
 Common Pleas, in answer to this passage, and to the case of Morris 
 V. Branson, cited by my Brother Buller upon the same point. If 
 indeed a patent could not be granted for an addition, it would be 
 depriving the public of one of the best benefits of the statute of 
 
520 SUBJECT MATTER: 
 
 James. Lord Coke's opinion, therefore, seems to tave teen formed" 
 without due consideration ; and modem experience shows that it is 
 not well founded." (8 T. Bep. 104; Bav. P. C. 233.) 
 
 (a) Ex parte Pox. [1812] 
 
 The petitioners having applied for a patent in respect of certain 
 improvements in steam-engines, a caveat was entered under an 
 existing patent, from which it was alleged the new patent was 
 borrowed, and with which it would interfere. The affidavit of an 
 engineer was put in, stating that they were not the same, nor in 
 any respect resembling each other. 
 
 Lord Chancellor Eldon said : " If the petitioners have invented 
 certain improvements upon an engine for which a patent has been 
 granted, and those improvements could not be used without the ori- 
 ginal engine, at the end of fourteen years the petitioners could make 
 use of a patent taken out under their improvements, though before 
 that period expired they would have no right to make use of the 
 other's substratum. At the end of that time, the public has a 
 choice between the patents. My present opinion is, that this 
 patent must go." Patent granted. (1 V. d: B. 67 ; 1 Web. P. G. 
 431.) 
 
 (6) Lister v. Leather. [1857] 
 
 Lord Campbell, C.J., said : " The second argument was that, if 
 a subsequent patent for a combination includes a part of an inven- 
 tion already protected by patent, it infringes on the property of 
 another, and so is a violation of his right, and ought to be held 
 illegal on account of his interest. The answer is that the patent 
 for an improvement on an invention already the subject of a patent, 
 if confined to the improvement, is not an infringement of the former 
 patent. The use of the improvement with the former invention, 
 during the existence of the former patent, without licence, would 
 be an infringement ; but, with licence, that also would be lawful, 
 as is in constant experience. Indeed the objection was carried to 
 the extent that a patent for an improvement on a patent invention 
 of the same patentee would be void ; but this rests only on the 
 assumption that the improvement cannot be distinguished from the 
 invention on which it is made. The assertion, that all patents for 
 improvements on existing patents must be void, is obviously 
 untenable." (8 El. & B. 1017.) 
 
 (c) Ealston v. Smith. H. L.. [1865] 
 
 The word " manufacture " comprehends a new process or an 
 improvement of an old process. (11 M. L. Gas. 223; 20 Gom. B., 
 N. S. 28 ; 35 L. J., G. P. 49 ; 13 L. T. Sep., N. S. 1.) 
 
 {d) Pox V. Dellestable. [1866] 
 
 Malins, V.-C. : " No doubt a man may make an invention which 
 is partly covered by an existing patent, but he cannot use it with- 
 
Addition to a Tmown Machine or Process. 521 
 
 out the licence of the patentee. He may wait for the expiration 
 of the patent, and take out one himself if his invention be novel, 
 and that patent will be valid." {IS W. B. 195.) 
 
 (e) Eabes v. Staebuck Wagon Company. [1881] 
 
 Eades was owner of a patent for an invention described as being 
 a method of making the body of a tramcar so as to swivel upon 
 the underframe or carriage. There was an existing patent for the 
 same purpose from which Eades' patent differed only in the addi- 
 tion of a lengthening of the truck and the addition of two extra 
 segmental circles for the purpose of better supporting the car : — 
 Held, that these additions did not constitute such an invention as 
 to entitle the plaintiff to a patent. (TF. N. 1881, 160.) 
 
 (/) Jensen v. Smith. [1 885] 
 
 The question being whether there is sufficient invention in the 
 difference between the plaintiff's machine and the alleged antici- 
 pation to be the subject of a proper patent, the fair way to try 
 that question is, supposing the plaintiff to have been first, and that 
 some one had then made the machine now alleged to be an antici- 
 pation, would the plaintiff have submitted to that, or would he not 
 have said that it was an infringement of his patent ? {Griff. 
 136 ; 2 0.B. 249.) 
 
 (/*) Philpott v. Hanbuet. [1885] 
 
 The plaintiff's patent was for improvements in apparatus for 
 use in drafting patterns for dresses : — Meld, that as patents already 
 existed by which you could supplement measurements by applying 
 curves, you could not get a valid fresh patent by putting new 
 curves or slightly changed curves to the measurements. (2 0. B. 
 33.) 
 
 (g) United Horseshoe and Nail Company v. Swedish Hoesenail 
 Company. [1888] 
 
 The substitution of a pivot for a hinge in connection with a 
 movable plate for the conductor of a finishing machine for nails 
 is not good subject-matter. (6 0. B. 1.) 
 
 (h) Cole v. Saqui. C. A. [1888] 
 
 The introduction into an automaton toy of a free top spun in a 
 cup as the motor in place of a top spun on a fixed bearing is merely 
 the substitution of one known mechanical equivalent for another, 
 and is not patentable. (6 0. B. 41.) 
 
 (i) Heebueger Schwandee et Cie v. Squire. C. A. [1889] 
 
 A method of modifying the action of a lever in pianoforte 
 actions by using an arm at right angles or nearly so, and placing 
 the centre of the damper at the end of the arm is not good subject- 
 matter. (6 0. B. 194.) 
 
522 SUBJECT. MATTEE : 
 
 (J) Blakey «. Latham and Company. C. A. [1889] 
 
 , The plaintiff claimed an improved heel plate properly shaped to 
 fit the heel of a boot or shoe, and formed or provided with pegs, 
 spikes, or teeth, whereby it is secured on the heel as described, 
 The invention was said to consist in making the spikes solid with 
 the plate, whereas formerly holes were made in the plate and 
 spikes driven through. Smaller plates called clinkers with two 
 prongs solidly attached had long been known and used to protect 
 the toes of boots. Seld, by the Court of Appeal that the patent 
 was bad for want of subject-matter. Cotton, L.J. : "We were 
 much pressed with Hayward v. Samilton. I doubted about it for 
 a considerable time, and I do not agree with all that the Master of 
 the Rolls s^ys there, but there really was invention in that case." 
 (6 0. B. 184.) 
 
 (h) Slazengee «. Feltham. C. A. [1889] 
 
 Kekewich, J., following North, J., in Moss v. Malings had held 
 that a patent for making grooves down the handles of lawn tennis 
 racquets and adding a knob to make an enlargement at the end 
 was good so far as subject-matter was concerned : — Held, by the 
 Court of Appeal, that it was merely a roughing of the handle similar 
 to the grooves made on the stock of a gun, or the twine on a 
 cricket bat, and the knob at the end of the handle of a hammer, and 
 was not the subject-matter of a patent. (5 T. L. B. 364 ; 6 0. B. 
 232.) 
 
 Application of a Jcnown Machine, Process or Material to a Neva 
 
 Purpose. 
 (I) Hartley's Case. 
 
 A method of disposing plates of iron so as to produce a useful 
 effect, viz., to secure buildings from fire, is a good subject-matter, 
 (2 H. Bl. 493.) 
 
 (m) Macimtosh v. Eveeington. 
 
 A claim for the application of indiarubber, in a state of solution, 
 as a cement between two fabrics to make a waterproof covering is 
 good, notwithstanding the application of other substances, and of 
 indiarubber in other states, to the same purpose. (6 Bep. Arts, 
 N. S. 317, 365.) 
 
 («) Bednton v. Hawkes. [1821] 
 
 Patent for improvements in ships' anchors, &c. Abbott, C.J., 
 in speaking of the anchors, says : " Formerly three pieces were 
 united together, the plaintiff unites only two ; and, if the union 
 of those two had been effected in a mode unknown before, as 
 applied in any degree to similar purposes, I should have thought 
 it a good ground for a patent." (4 B. & Aid. 650.) 
 
 (o) LosH V. Hague. N. P. [1838] 
 
 There is a material difference between applying a new con- 
 trivance to an old object, and an old contrivance to a new object. 
 (1 Web. P. G. 207.) 
 
AppUeation to a New Purpose. 523 
 
 (p) Kay v. Maeshall. H. L. [1841] 
 
 Lord Cottenham, L.O., said, in the House of Lords ; " If he 
 (the patentee) has discovered any means of using the machine, 
 which the world had not known before the benefit of, that he has 
 a right to secure to himself by means of a patent; but if this 
 mode (described in the specification) of using the spinning machine 
 was known before, then the plaintiff cannot deprive them of 
 having the benefit of that which they enjoyed before." (2 Weh. 
 P. G. 82.) 
 
 (2) Walton v. Pottbe. [1841] 
 
 The adaptation of a substance of known properties to a parti- 
 cular purpose may be the subject of a patent. An invention of 
 improvements in cards for carding wool, cotton, silk and other 
 fibrous substances, and for raising the pile of woollen and other 
 cloths by the application and adaptation of caoutchouc or india- 
 rubber, as a substitute for the fillets or sheets of leather, is 
 patentable. 
 
 Coltman, J., said ; " It appears to me that it is a very useful 
 application and adaptation of a substance, the properties and 
 qualities of which for the purpose had never been known before, 
 and therefore that it was properly the subject of a patent." 
 (4 Scott's N. iJ. 91 ; 2.M.& O. 411 ; 1 Weh. P. G. 597.) 
 
 I 
 (f) MuNTz V. PosTEE. N. p. [1844] 
 
 Action for the infringement of a patent, granted to the plaintiff 
 in 1832, for " an improved manufacture of metal plates for sheathing 
 the bottoms of ships or other such vessels." The defendants 
 pleaded (inter alia) want of novelty in the invention. Tindal, 
 C. J., " I look upon the invention to consist in this, that he has by 
 an experiment ascertained that a certain mixture of the alloy of 
 zinc with copper will have the effect of producing a better sheath- 
 ing, by reason and by means of its oxydating just in sufficient 
 quantity ; that is, not too much, so as to wear away and impair 
 the sheathing, and render the vessel unsafe, but enough at the 
 same time to keep, by its wearing, the bottom of the vessel clean 
 from those impurities which before attached to it. That I con- 
 sider to be the meaning of the patent, and the object with which 
 it was taken out. And I cannot think, as at present advised, that 
 if it was shown (as possibly it may be), that sheets had been made 
 of metal before, in the same proportions which he has pointed out ; 
 that if this hidden virtue or quality had not been discovered or 
 ascertained, and consequently the application never made, I cannot 
 think the patent will fail on that ground. . . . When I come to 
 that part of the case in which they (the defendants) seek to show 
 this is not so (a proper ground of a patent), because these metal 
 plates have been invented before— that is, persons have used them 
 ■before — in my judgment it will not go far enough, unless they 
 can show there has been some application of them before to this 
 very useful purpose." (2 Weh. P. G. 103.) 
 
524 SUBJECT MATTER: 
 
 (s) Pow V. Taunton. [1845] 
 
 Patent for the invention of a nipping lever for causing the 
 rotation of wheels, shafts or cylinders, nnder certain circumstances. 
 The specification claimed as the invention " the nipping lever, 
 with its tusk and sliding box, applied to a rimmed wheel, or to a 
 rimmed flange, for the purpose of causing the same to rotate or 
 move together with any shaft, cylinder, or other suitable machi- 
 nery which may be attached thereto." The nipping lever was not 
 new, but the application of it by means of the sliding box was new. 
 Denman, C.J., said : " As the plaintiff did not claim the invention 
 of the nipping lever, but only the application of it to a subject- 
 matter, to which it had not been applied before, it was contended, 
 for the defendant, that the mere application of a known instrument 
 to a new purpose will not support a patent, unless the means or 
 method of the application is also new. The application of a 
 nipping lever to the surface of a wheel, for the purpose of making 
 it revolve, may be new, but the mere novelty of the application is 
 not enough ; it must also appear that the means, essential for 
 carrying the application into effect, are new also. In the present 
 case, the means for applying the old invention to the new purpose 
 are the sliding boxes ; and, if they are essential to the application, 
 and novel as means for the purpose, the patent may be supported." 
 (9 Jur. 1066.) 
 
 (0 Eeg. v. Cutler. N. P. [1847] 
 
 Scire facias to repeal letters patent granted to the defendant for 
 " Improvements in the construction of the tubular flues of steam 
 boilers." The specification described two methods of welding 
 iron tubes, and a method of making iron tubes coated with copper, 
 brass, &o. The patentee after claiming the two methods, de- 
 scribed in the specification, of welding iron tubes, and disclaiming 
 the method of coating iron tubes with copper, &c., proceeded 
 thus : " Thirdly : I claim the application of either iron or steel 
 tubes, when coated with copper, brass, or other alloys of copper, 
 in the construction of tubular flues for steam boilers. And, 
 fourthly : I claim, in the construction of tubular flues of steam 
 boilers, the application of welded iron or steel tubes, which have 
 been drawn through a circular hole or die, or between rollers, 
 and which have been drawn over a mandrel." Among other 
 suggestions of grounds for the repeal of the patent, it was con- 
 tended for the Crown that the supposed invention described in 
 these claims, was not a principle of working or making any 
 manner of new manufacture. Lord Denman, C.J., said : " With 
 regard to the third and fourth claims, in which the defendant 
 Cutler claims the application of tubes in the construction of 
 tubular flues, it appears to me that he has no right to take out 
 a patent for the mere application of particular things to any 
 particular purpose. If he had made a new combination, that 
 might have been a new discovery, and a proper subject for a 
 patent; but I think Lord Abinger's illustration is a striking 
 
Application to a New Purpose. 525 
 
 one, and applicable to the present case. 'It is like sweeping 
 a carpet of a new manufacture with an old broom.' If he had 
 introduced a new article which required the application of a new 
 principle to the production of it, it might have formed a subject 
 of a patent ; but the mere application of a thing which existed 
 before does not appear to me to be a subject for a patent. And, 
 in general terms, I think that the application of an article to 
 produce any particular result, the party having no claim either 
 to the mode of producing the article or to the mode of applying 
 it for attaining that result, forms no ground for a patent. It 
 appears from the specification, and indeed it is admitted by the 
 defendants, that the coated tubes mentioned in the specification 
 are not new ; and I think, therefore, that the third part of the 
 invention which is claimed in this specification cannot be made 
 the subject of a patent. It seems to me, also, that the same 
 objection applies to the fourth part — nothing more is claimed 
 than the mere application of the tubes." At a new trial, which 
 was granted on another point, Wightman, J., said : " I entertain 
 a strong opinion on this question, as to whether a mere appli- 
 cation can be made the subject of a patent ; for when once you 
 have got a material, you may apply it as you may think fit." 
 {Macrory, P. G. 124; 3 C. <& K. 215; 14 Q. B. 372, (»).) 
 
 (ii) Steiner v. Heaid. [1861] 
 
 Prior to the date of the plaintiff's patent, granted to him in 
 1843, madder dye had been obtained from fresh madder by the 
 application of hot water, but there still remained in the dye-vats 
 a residuum, called " spent madder," which was known to contain 
 some colouring matter, but which had never been extracted from 
 it, and the " spent madder " was consequently thrown away as 
 useless. Some time prior to the plaintiff's patent a process was 
 discovered, which, by the application of hot water and acid to 
 fresh madder, produced a dye called garancine, which possessed 
 different properties to the old madder dye. This process ex- 
 tracted the whole colouring matter from the fresh madder. The 
 plaintiff, by his patent, claimed the application of this process to 
 "spent madder," whereby he obtained garancine. And the 
 " spent madder " thereby became of much value : — Held, that, as 
 "spent madder" might be in its nature and properties the same 
 as or different from " fresh madder," it did not follow, as matter 
 of law, that the plaintifTs patent was void ; but that it was a 
 question of fact for the jury, whether the plaintiff's invention was 
 a new manufacture of garancine. (6 Exch. 607; 17 Jur. 875; 20 
 L. J., Exch., 410.) 
 
 (v) Bush v. Fox. H. L. [1852—1856] 
 
 Patent for " Improvements in the means of, and in the ap- 
 paratus for, building and working under water." The patentee, 
 in his specification, says : " My invention relates to means and 
 apparatus for working under water, in order to produce excava- 
 tions and building foundations of lighthouses, piers, jetties, and 
 other structures under water." And the patentee continued : 
 
526 SUBJECT MATTEE: 
 
 " WHat I claim is, tte mode of constructing tlie interior of a 
 caisson, in such manner that the workpeople may be supplied 
 with compressed air, and be able to raise the materials excavated, 
 and to make or construct foundations and buildings, as above 
 described." At the trial it was proved that the apparatus 
 described in a prior patent was the same in all material respects 
 as the plaintiff's caisson, the mode of working was the same in 
 both cases, and they differed only in their application, the prior 
 patent being for excavating and sinking shafts, &o., on land, the 
 plaintiff's for sinking, excavating, and constructing foundations 
 under water. Pollock, C.B., in directing the jury, said : " I think 
 that an invention must be a production of something that can 
 be used or sold or made use of for some purpose, or some method 
 which results in something of the same sort. And I think that 
 a man cannot, if he has applied — supposing this to be a new 
 application — an old invention, or part of an old invention, to a 
 new purpose, obtain a patent for such an application. Now, if 
 the construction of this caisson, or pile, or whatever it is to 
 be called, is to be looked upon as old, and the object of the patent 
 is for applying it to a new purpose, that is not a manufacture ; 
 and the application is such an operation (if so it can be called) 
 that nothing new which results from it can, I think, be the 
 subject of a patent. ... If a man were to take out a patent 
 for a telescope, to be used to make observations on land, I do 
 not think any one could say, ' I will take out another patent 
 for that telescope, to be used for making observations on the sea.' 
 I therefore direct you, that, in point of law, in my judgment, the 
 supposed invention was not an invention of any manner of new 
 manufacture in manner and form as the plaintiff has alleged." 
 (Macr. P. a 164.) Aff. in Exch. Ch. Maule, J. : " Assuming that 
 the machine itself is old, the learned judge held that a mere appli- 
 cation is not a new manufacture, and therefore, not the subject of 
 a patent ; and my present opinion is that, on the evidence, he was 
 right in so directing the jury." (Macr. P. C. 166 ; 23 i. /. Ex. 
 257. Aff. in H. of L., 5 S. L. Cos. 707 ; 25 L. J., Ex. 261 ; 2 Jur. 
 N. S. 1029 ; Macr. P. C. 178.) 
 
 (v) Maetin aot) Hyam's Patent. [1855] 
 
 A patent was granted for improvements in goloshes or over- 
 shoes, on the ground that the application of gutta-percha to such 
 a purpose might be good subject-matter. (3 W. B. 433.) 
 
 (w) Tetley v. Easton. [1857] 
 
 The discovery that a particular advantage may be attained by 
 the use of a machine known before, in a manner known before, is 
 not an invention or application which can be made the subject of 
 a patent. (2 Coml. B., N. S. 706 ; 26 L. J., 0. P. 269.) 
 
 (x) The Patent Bottle Envelope Company v. Seymer. [1858] 
 
 Infringement of a patent for "improvements in the manufac- 
 ture of cases or envelopes for covering bottles." The invention 
 consisted in an arrangement of apparatus by which lengths of 
 
Afplicaticm to a New Pti/rpose. 527 
 
 rush, straw, or other suitaWe material, may he tied together so 
 as to form cases or covers to protect bottles from breakage 
 when packed. For this purpose the plaintiff employed moulds 
 or mandrels, corresponding in form to the bottle for which the 
 case or cover is intended, over which he tied the lengths of rush, 
 &c. After describing the manner of performing his invention, 
 the patentee claimed " the combination of mechanism and the 
 making of envelopes for bottles, as herein described." The 
 defendants also worked a patent for "improvements in the 
 manufacture of cases or packings for bottles or jars," in which 
 they employed a similar mould or mandrel, and this was the 
 infringement complained of by the plaintiffs. Willes, J. de- 
 livering the judgment of the Court of Common Pleas, said : 
 " The fact that the model or mandrel constitutes part only of 
 the plaintiff's process does not of itself affect the question. The 
 infringement of any part of a patent process is actionable, if 
 that part is of itself new and useful, so as that it might be 
 the subject-matter of a patent, and is used by the infringer to 
 effect the object, or part of the object, proposed by the patentee. 
 The question, therefore, is whether the plaintiffs could have 
 taken out a patent, simply for applying a model or mandrel in 
 the form of a bottle, or, indeed, a bottle itself, in making 
 envelopes for bottles. We are of opinion that they could not. 
 The use of a model or mandrel, for producing given forms of 
 pliable materials, was admitted at the trial, and, indeed, without 
 such admission, is well known to have been for ages common and 
 usual in various arts. Such use was part of common knowledge, 
 and a model or mandrel for purposes similar to that of this patent 
 was an ordinary and well-known tool. It is merely in respect of 
 the sort of material to which it is applied, and the form of the 
 utensil produced by it, that the plaintiff's application of the 
 model possesses any novelty. The application of a well-known 
 tool to work previously untried materials, or to produce new 
 forms, is not, in our opinion, the subject-matter of a patent. 
 The observations of the Court in giving judgment in the recent 
 case of Tetley v. Easton sustain this proposition. Indeed, to hold 
 the contrary might tend to produce oppressive monopolies in 
 the application of old and well-known implements to new 
 materials, without any further novelty or merit than the dis- 
 covery of the material, or the form into which it is to be worked. 
 Such a discovery is not, in our opinion, one of a new ' manufac- 
 ture ' within the statute of James ; and a patent for it alone 
 cannot be maintained." (5 Com. B., N. S. 164; 28 L. J., 0. P. 
 22; 5Jur.,N.S. 174.) 
 
 (j) Beook v. Aston. [1859] 
 
 A patent was obtained in 1856 for " An improvement in finishing 
 yarns of wool or hair, and in the finishing of woven fabrics, or 
 piece goods." The specification stated the improvement to consist 
 of causing yarns of wool or hair, whilst distended and kept sepa- 
 rate, to be subjected to the action of rotatory beaters or burnishers. 
 
528 SUBJECT MATTEE: 
 
 by which Buch yarns will be bumislied or polisiied on all sides ; 
 and in subjecting woven fabrics or piece goods of cotton, linen, 
 silk, wool, hair or other fabrics to a similar process. The separate 
 parts, as well as the exact details of machinery employed, were 
 disclaimed, the patentee claiming as his invention merely the 
 application of the above process to the yarns and fabrics specified. 
 The defendants at the trial proved that a patent had been obtained 
 in 1863 for the same improvement in finishing cotton and linen 
 yarns by a similar process similarly applied : — Seld, that the 
 plaintiff's patent was bad, as the mere application of known 
 machinery by the same means to some new substance is not the 
 subject of a patent. (8 El. & Bl. 478 ; 27 L. J., Q. B. 145 ; 4 Jur., 
 N. S. 279.) This judgment was affirmed in the Exchequer 
 Chamber. Cockburn, C. J., said : " It seems to me that the 
 material to which the process under the respective patents are to 
 be applied are of so similar a nature, that where a patent is taken 
 out for a process as to one, another patent cannot be taken out for 
 applying the same process to the other." Martin, B. : " The 
 application of a well-known tool to work previously untried 
 materials, or to produce new forms, is not the subject of a patent. 
 When a machine is well known it becomes in fact a tool. I am 
 therefore of opinion that the application of this machinery to 
 woollen yams is not the subject of a patent." (28 L. J., Q. B. 
 176 ; 6 Jur., N. S. 1025.) 
 
 (2) Maozelcan v. Eennie. [1862] 
 
 The plaintiff's patent was for " Improvements in floating docks." 
 It was proved at the trial that the construction of the floating 
 docks was not new. The plaintiff then said that his invention 
 consisted, not in the construction of floating docks, but in the 
 application of iron, in the place of wood, to their manufacture. 
 The Court, having determined that this claim was not borne 
 out by the specification, continued : " We think it right to add, 
 that it must not be inferred that the Court entertains an opinion 
 that the alleged invention, even if it were appropriately claimed, 
 could properly be the subject of letters-patent. It is unnecessary 
 on this occasion to give any opinion upon that point ; but we wish 
 not to be supposed to sanction such a notion." (13 Com. B., 
 N. S. 52.) 
 
 (o) Thompson v. James. Ch. [1863] 
 
 Hoops of whalebone, cane, and other substances, suspended 
 from the waist and forming a petticoat, had long since been used 
 by ladies. The plaintiffs took out a patent for using, for the same 
 purpose, hoops made of steel watch springs. The Master of the 
 EoUs said : " If the plaintiffs' claim is simply to use steel springs 
 in a position where formerly whalebone was used, that does not 
 appear to me to be the subject of a patent; there is no invention, 
 and nothing that can properly be called an invention in that, and 
 nothing which can properly form the subject of a patent. ... To 
 constitute the subject of a patent there must be some real novelty 
 
Application to a New Purpose. 529 
 
 in ihe invention, either hj a new combination of old existing 
 materials, or else by the discovery of something that did not exist 
 before." (32 Beav. 670.) 
 
 (6) Penn «. BiBBY ; Penn K.Jack. [1866] 
 
 The plaintiff's patent was granted for an improvement in the 
 bearings and bushes for the shafts of screw and submerged pro- 
 pellers. The specification described the invention as follows : 
 " The inner surfaces of these bearings are grooved to receive fillets 
 of wood, which project to some extent beyond the inner surfaces 
 of the metal bearings so as to prevent the shaft coming into 
 contact with the metal of the bearings, and these spaces admit of 
 the water flowing freely between the shaft and the inner surfaces 
 of the metal bearings." At the end of the specification the 
 patentee said : " What I claim is the employing of wood in the 
 construction of the bearings and bushes for the shafts of screw 
 and submerged propellers as herein described." It was objected 
 that this was not the subject-matter of a patent, because the alleged 
 invention was merely a new application of an old and well-known 
 thing. The only examples of old use alleged by the defendants 
 were in grindstones and water-wheels. The Lord Chancellor 
 said : " It is very difficult to extract any principle from the 
 various decisions on the subject which can be applied with cer- 
 tainty to every case ; nor indeed is it easy to reconcile them with 
 «ach other. The criterion given by Lord Campbell in Brooh v. 
 Aston has been frequently cited (as it was in the present argument), 
 that ' a patent may be valid for the application of an old invention 
 to a new purpose ; but to make it valid there must be some 
 novelty in the application.' I cannot help thinking that there 
 must be some inaccuracy in the report of his lordship's words ; 
 because, according to the proposition as he states it, if the inven- 
 tion is applied to a new purpose, there must be some novelty in the 
 application. Lord Chief Justice Cookburn approaches much nearer 
 -to the enunciation of a principle, or, at least, of a rule, for judging 
 in these cases, in Marwood v. The Great Northern Bailway Company ; 
 there he says, ' Although the authorities establish the proposition 
 "that the same means, apparatus, or mechanical contrivance cannot 
 be applied to the same purposes, or to purposes so nearly cognate 
 •and similar as that the application of it in the one case naturally 
 leads to the application of it when required in some other, stiU 
 the question in every case is one of degree, whether the said 
 amount of affinity or similarity which exists between the two 
 purposes is such that they are substantially the same, and that 
 determines whether the invention is sufficiently meritorious to be 
 deserving of a patent.' In every case of this description, one 
 main consideration seems to be, whether the new application lies 
 so much out of the track of the former use as not naturally to 
 suggest itself to a person turning his mind to the subject, but to 
 require some application of thought and study." Applying this 
 test to the present case, his lordship held, that the patented in- 
 vention was not merely an application of an old thing to a now 
 
 2 51 
 
530 SUBJECT MATTEE: 
 
 purpose, liTit that it was a sufficient invention to support a patent. 
 (L. Bep., 2 Ch. 127; 36 L. J., Cli. 465 ; 15 W. B. 208; 15 L. T. 
 Bep., N. S. 399.) 
 
 (c) White v. Toms, Ch. [1867] 
 
 Ladies' mourning bonnet and hat falls having previously been 
 made with the ornamental folds on the outside only, so that when 
 turned up a " wrong side " was exposed to view, the plaintiff in- 
 troduced and patented an improved mode of making them with 
 the folds on the inner side also, so as to form both sides alike, but 
 there was no novelty in the process of manufacture. Malins, Y.-C, 
 held, that this was not a subject for a patent, for "where there is 
 merely an improvement in the mode of manufacture and no in- 
 vention, that is not a proper subject for a patent." (37 L. J., Ch. 
 204 ; 17 L. T. Bep., N. S. 848.) 
 
 (d) EusHTON V. Ceawley. Ch. [1 870.] 
 
 The plaintiff obtained a patent for the use of animal fibre, by 
 preference Eussian wool, or wool of a coarse texture, in tlie manu- 
 facture of artificial hair to be made up as ladies' head-dresses, and 
 for upholstery, and other like purposes. Upon bill filed to restrain 
 an infringement of the patent, Vice-Chancellor Sir E. Malins said : 
 " It is a gross violation of the privilege conferred upon inventors 
 for a person to take out a patent for a known article which has 
 been used for years, because he finds he can produce a thing 
 cheaper or better by a new material, or to suppose that directly 
 he uses the new material it can be a subject for a patent. Sup- 
 pose any one should discover some other well-known material for 
 making these things, such as paper, is he to take out a patent for 
 it ? And afterwards someone else should find out they could be 
 made of straw, is he also to have a patent? So far as my opinion 
 goes, and I desire it to be distinctly understood, the use of a new 
 material to produce a known article is not the subject of a patent, 
 but there must be some invention, something really new, some- 
 thing more valuable to the public than the simple use of a new 
 material to produce a known article. I do not think it is neces- 
 sary to go through the various authorities which were cited. The 
 case of Crane v. Price was a patent fur the use of anthracite coal. 
 The patent was established, but it is now generally considered 
 that such a case would not succeed in the present day. The case 
 of Brook V. Aston is conclusive against the plaintiff. That was a 
 patent for simply using some machinery for wool which had been 
 previously used for linen, yarn, or cotton. That, therefore, was 
 using the same thing for a new material ; this is using a new material 
 for an old thing, according to the statement of the plaintiff, l^ut 
 it turns out from the evidence that it is not a new material, but a 
 perfectly old material. Assuming, however, that it was new, and 
 that wool had never been used before for making these articles, 
 upon that assumption, in my opinion, the patent would be wholly 
 void." {L. Bep., 10 Eq. 522.) 
 
Afplieation to a New Pwrpose. 531 
 
 (e) Johnson v. Etlands. Bxcli. Ch. [1873] 
 
 A patent for improvements in testing the strength of wire, 
 claimed the passing wire for that purpose over surfaces, one of 
 which is caused to draw it forward at an accelerated rate. A 
 similar apparatus had been previously in use for the purpose of 
 straining and taking the kinks out. Blackburn, J. : " It appears 
 to me that if the plaintiff had made a claim of this sort knowing 
 that the defendant had strained wire and it had been done and 
 used openly and knowingly, and said ' I claim two drums for 
 straining the wire and taking the kinks out, using the same mode 
 of straining and the same mode for the purpose of ascertaining 
 and testing the strength of the weakest part of the wire,' that 
 would not have been the subject of a patent at all. That would 
 have been applying it to effect an old purpose in a way it had not 
 been done before, and it is not because it happened that nobody 
 had used it before in that way, that that therefore would have 
 made it the subject of a patent." The patent was however held 
 good on the ground that the drums being so arranged that there 
 was uniform expansion of, say, two per cent, in the wire before it 
 was wound on the second drum, the invention was valuable as 
 showing that all the wire was capable of bearing that percentage 
 of expansion. {Griff. 138.) 
 
 (/) CEOTSDAIiE V. FiSHEK. [1884] 
 
 The patent was for improvements in the manufacture of manure. 
 Pollock B. : " If an inventor comes foiward and does not claim too 
 widely, but claims honestly an invention as an invention, and 
 gives to the public for the first time the result obtained by the 
 admixture of different processes, although these processes had been 
 known before for some purposes, and although the product had 
 been known before, still if the process is new in the sense that 
 some hitherto unknown result is produced by a known process, 
 and that such result is useful and of commercial value, in that 
 case he is entitled to a patent." The test whether the object 
 attained is new or only cognate, is in this case : " Given the 
 desideratum of manufacturing this powder, given the existence of 
 Forrest's machine, given the knowledge which previously existed 
 with regard to what could be effected by the admixture of 
 sulphuric acid in any proportions with shoddy, given all these as 
 data, is there any one who could say that the application of 
 Forrest's machine in the mode in which it was specified for by the 
 plaintiff would produce not only that which he claims but which 
 he proves by ids witnesses to have been carried out." (1 0. B. 17 
 at p. 19.) 
 
 {g) Lister v. Norton. [1886] 
 
 The glossiness and softness of silk, and the resiliency of mohair 
 were well known and the two had been used together in making 
 glace goods, but held that the use of the two together in a 
 specified manner so as to attain a, more perfect imitation of sealskin 
 involved sufficient invention to support a patent. (3 0. B. 199.) 
 
 2 M 2 
 
532 SUBJECT MATTEE: 
 
 (A) Edison and Swan Electric Light Company v. Woodhouse. 
 (No. 2.) 0. A. [1887] 
 The patent claimed, secondly, a material for the manufacture of 
 illuminating conductors produced by electrically heating carbon 
 in a carbon gas, and was attacked on the ground of the prior 
 production of a similar material by Despretz experimentally. 
 The Court came to the conclusion that for all useful and practical 
 purposes the processes and the products were different, and 
 expressed no opinion whether, in case they had been in all 
 respects the same, the patent would have been bad, although it 
 showed how to apply to a useful purpose, carbon which neither 
 Despretz nor any one else was aware had the special useful 
 qualities discovered by the patentee. {Griff., p. 94; 3 0. B. 183 ; 
 4 0. B. 99.) 
 
 (h*) Ehrlich v. Ihlee. C. A. [1888] 
 
 The plaintiffs patent was for improvements in musical instru- 
 ments, in which the notes are produced by the passage of a 
 perforated sheet across levers operating valves, and the invention 
 consisted substantially in employing a perforated disk instead of 
 a band. A disk had already been applied in looms to operate on 
 levers instead of a band, but in that case the motion was dis-, 
 continuous, whereas here it was continuous : — Seld, that the 
 application of the disk to a musical instrument was new, and' 
 was good subject-matter. (6 0. B. 437.) 
 
 (i^) DOWLING V. BiLLINGTON. [1890] 
 
 A new method of using existing machinery for the weaving of 
 wire mattresses, so as to produce a new and useful result, viz., the 
 more even distribution of strength ; — Seld, to be good subject- 
 matter. (7 0. B. 191.) 
 
 Application of a Jcnown Machine, Process or Material to an Analogous 
 
 Purpose. 
 
 (J) LosH V. Hague. N. P. [1838] 
 
 The application of a well-known thing to an operation analogous 
 to that for which it has already been used is not the subject of a 
 patent. (1 Web. P. G. 208.) 
 
 0') Kay v. Marshall. [1839—1848] 
 
 Patent for " a new and improved machinery for preparing and 
 spinning flax, hemp, and other fibrous substances, by power." 
 The first part of the invention claimed, consisting of machinery for 
 macerating flax, &c., was held to be new, and a proper subject for 
 a patent. The second part of the invention consisted in placing 
 the drawing rollers only two and a half inches from the retaining 
 rollers. It was proved that before the date of the patent flax and 
 other fibrous substances were spun with machines by which the 
 reach was varied according to the staple or fibre of the article to 
 be spun, and that that had been a fundamental principle of dry 
 spinning. Cotton had also been spun at a short reach. The use 
 
Application to an Analogous Purpose. 533 
 
 6f moistuie in spinning flax had been adopted under a prior 
 patent, thongh in a manner different from that proposed by the 
 plaintiff. The question before the Court therefore was, whether 
 the application of the short reach to the spinning of flax, when in 
 a state of maceration, was a proper subject for a patent, Tindal, 
 C. J., held, that it was not, being merel)'^ " the application of a 
 piece of machinery already known and in use, to the new mace- 
 rated state of the flax Suppose a patent to have been first 
 
 obtained for some entirely new method, either chemical or 
 mechanical, of reducing the fibres of flax to a short staple, we 
 think that a second patent could not be taken out for an improved 
 mode of machinery in spinning flax, which consisted of nothing 
 more than the spinning of the short staple of flax by a spinning 
 machine with a reach of a given length, not less than that already 
 in use for the spinning of cotton ; the effect of which would be, to 
 prevent the first patentee from working his invention with the 
 old machine at the proper reach. If a patent taken out for that 
 object separately would be invalid, so also a patent taken out for 
 an invention consisting of two distinct parts, one of which is 
 that precise object, would be void also." (5 Bing. N. C. 492 ; 
 7 Scott, 648; 8 L. J., C. P. 261; 2 Weh. P. C. 71. Judgment 
 affirmed in the House of Lords, S C. dt F. 245 ; West, 682 ; 6 Jur. 
 1028 ; 2 Web. P. G. 79.) 
 
 (j) Calvert v. Ashbuen. 
 
 The application of caustic alkalies for the purpose of dissolving 
 the gluten contained in flour, employed in the manufacture of 
 size, is not good subject-matter, inasmuch as they had been pre- 
 viously employed for the purpose of dissolving . gluten in the 
 manufacture of starch. (John. 84.) 
 
 (/) Hyde v. Trent. 
 
 The principal part of an invention for separating the fibres of 
 cocoa-nut husks consisted in passing the split husks between 
 crushing rollers such as had previously been employed in treating 
 hemp : — Held, that their application to crushing cocoa-nut fibre 
 was not good subject-matter. (John. 79.) 
 
 (k) HoETON V. Maboit. [1862] 
 
 The plaintiff in his patent claimed the application of double- 
 angle iron to the construction of the troughs of the hydraulip 
 joints of telescope gasholders. Before the date of the patent thes^ 
 troughs were constructed of two long pieces of single-angle iron, 
 which were attached to a sheet of iron of equal length by means 
 of a double row of rivets. The jury found, first, that a trough of 
 double-angle iron had not been applied to the purpose of gas- 
 holders before the date of the patent. Secondly, that double- 
 angle iron was a known article of commerce, of a variety of sizes, 
 and applied to a variety of purposes in the form in which the 
 plaintiff claimed to use it. Willes, J. : "I do not deny that a new 
 combination of old materials producing a new effect may be the 
 
534 SUBJECT MATTEE: 
 
 subject of a patent, but there must be some invention. Bere all 
 that was done was the application of an old idea to the subject of 
 telescopic gasholders. That is no invention at all. The invention 
 consists in the idea, and the mode in which the idea is made of 
 practical utility. But the merit of that invention belongs to the 
 person who first moulded iron in one piece into the form of double- 
 angle iron, and applied it to such purposes as this." (31 L. J., 
 C. P. 225; 12 Com. B., N. S. 437; WW. B. 582; 6 L. T. Bep., 
 N. S. 289 ; affirmed on appeal, 16 Com. B., N. S. 141 ; 12 W. B. 491 ; 
 9 L. T. Bep., N. S. 815.) 
 
 (I) Oemson v. Clarke. [1862] 
 
 The patent was for an improvement in the manufacture of cast 
 tubular boilers for the heating of horticultural buildings. Boilers 
 of the same form had been made previously to the plaintiff's 
 patent, the several parts being cast separately and afterwards 
 fixed together. The plaintiff's improvement consisted in casting 
 the boiler in one piece; there was no claim as to the mode of 
 casting. The Court held, upon the authority of Sarwood v. The 
 Great Northern Bailway Company, and Horton v. Mabon, that this 
 was not the subject of a patent, being a mere application of the 
 well-known process of casting to an article previously well- 
 known. (32 L. J"., C.P.8; 13 Com. B., N. S. 337 ; 9 Jur., N. S. 
 749; 11 W. B. 118; 7 L. T. Bep., N. S. 361; affirmed in the 
 Exchequer Chamber, where, however, it was stated that if the 
 patent had been taken out for an improved mode of casting 
 tubular boilers in one piece, probably it might have been 
 supported ; 32 L. J., G. P. 291 ; 14 Com. B., N. S. 475 ; 10 Jur., 
 N. S. 128 ; 11 W. B. 787.) 
 
 (m) Willis v. Davison. [1863] 
 
 The pneumatic lever (a kind of bellows) was used in organs 
 before 1851 ; the compensating valve was used in the pedal 
 bellows of organs before 1851, for the purpose of easing their 
 working, but had never been applied to the pneumatic lever : the 
 plaintiff, in 1851, took out a patent for the application of the 
 compensating valve to the pneumatic lever, for the purpose of 
 easing the working of the latter : — Held, that plaintiff's contrivance 
 was not such a new invention as was capable of becoming the 
 subject of a patent. (1 N. B. 234.) 
 
 (n) Haewood v. The Great Northern Eailway Company. [1860 — 
 1865] 
 
 The plaintiffs were the executors of Wild, to whom a patent had 
 been granted for " improvements in fishes and fish-joints for 
 connecting the rails of railways," which consisted in formiag a 
 recess or groove in one or both sides of each fish, so as to reduce 
 the quantity of metal at that part, and to be adapted to receive the 
 square heads of the bolts. (The facts are more fully set out at p. 238 
 (r.) In the House of Lords, in answer to the Lord Chancellor, Black- 
 burn, J., delivering the opinion of Mr. Justice Shoe and himself, 
 
Apflieation to an Analogous Purpose. 535 
 
 after reading sect. 6 of the Statute of Monopolies, said : " In order 
 to bring the subject-matter of a patent within this exception there 
 must be invention so applied as to produce a practical result. And 
 we quite agree with the Court of Exchequer Chamber, that a mere 
 application of an old contrivance in the old way to an analogous 
 subject, without any novelty or invention in the mode of applying 
 such old contrivance to the new purpose, is not a valid subject- 
 matter of a patent. There are many decisions to that effect, which 
 were referred to at your Lordships' bar ; and, if the matter were 
 now for the first time to be decided on the construction of the 
 statute, without reference to the cases, we should think, on principle, 
 that such should be the conclusion of the Court. But then, in 
 every case, arises a question of fact, whether the contrivance before 
 in use was so similar to that which the patentee claims, that there 
 is no invention in the differences, if any, between the old con- 
 trivance, and that for which the patentee claims a monopoly ; and 
 if there be none, there arises a further question of fact, viz., whether 
 the purpose to which the contrivance was before applied and the 
 new purpose are so analogous or cognate, that there is no discovery 
 or invention in the new application ; whether, in short, it is a mere 
 application or not ? For, if there is invention or discovery pro- 
 ducing a practical benefit, as in the case of Grane v. Price, it is the 
 valid subject of a patent. And we think it always must be a 
 question of degree ; a question of, more or less, whether the analogy 
 or cognateness of the purposes is so close as to prevent there being, 
 an invention in the application." (35 L. J., Q. B. 33.) Channel!, 
 B., delivering the opinion also of Keating, J., and Pigott, B., said, 
 it was argued " that there was inventiou at all events in this 
 — that, whereas the grooved iron, as used in the bridges, had been 
 applied for the purpose of binding together pieces of material laid 
 upon one another horizontally, the grooved iron in fishing the rails 
 was applied laterally, binding together the material, and that its 
 great merit consisted in its performing the novel function of 
 resisting the vertical pressure to which it was exposed, and did so 
 by means of a plate equally strong, but rendered lighter than that 
 previously in use by the removal of that portion of the plate which 
 was useless in resisting such pressure. We do not find that any 
 allusion to such an invention, as that now suggested, was made 
 either at Nisi Prius, or in any of the judgments in the Court of 
 Queen's Bench supporting, or in that of the Exchequer Chamber 
 invalidating, the patent right ; nor do we think, looking to the terms 
 of the specification, that Wild ever intended to claim, or did claim 
 any such. . . . There is no novelty or invention to support the 
 patent." (35 L. J., Q. B. 35.) The Lord Chancellor, in delivering 
 the. judgment of the House of Lords, said: "The question is, 
 whether there can be any invention of the plaintiff in having taken 
 that thing, which was a fish for a bridge, and having applied it as 
 a fish to a railway. Upon that I think the law is well and rightly 
 settled, for there would be no end to the interferences with trade, 
 and with the liberty of any mechanical contrivance being adopted, 
 if every slight difference in the application of a well-known thing 
 
536 SUBJECT MATTEE: 
 
 were held to constitute a patent. . . . No sounder or more wliole-"-, 
 some doctrine, I think, was ever established than that which was 
 established by the decisions which are referred to in the opinions 
 of the four learned judges, who concur in the second opinion de- 
 livered to your Lordships, namely, that you cannot have a patent; 
 for a well-known mechanical contrivance merely because it is 
 applied in a manner or to a purpose which is analogous to the 
 manned or to the purpose in or to which it has been hitherto noto- 
 riously used. The channelled iron was applied in a manner which 
 w^as notorious, and the application of it to a vertical fish would be 
 no more than the application of a well-known contrivance to a 
 purpose exactly analogous or corresponding to the purpose to 
 which it had been previously applied." (35 L. J., Q. B. 38.) 
 
 (x)) Ealston v. Smith. H. L. [1865] 
 
 The discovery of one particular use of a known machine, although 
 more advantageous than that formerly known, is not the subject 
 of a patent. 
 
 Before the date of the plaintiffs patent, a roller and a bowl were 
 employed for calendering and for embossing woven goods. In the 
 process of calendering the cloth was passed between a roller and a 
 bowl ; the roller was smooth, and the surface velocities of the roller 
 and the bowl were unequal. In embossing, the cloth passed between 
 a roller which had the pattern to be transmitted to the cloth 
 engraved upon it, and a bowl, the two moving with equal surface 
 velocity. The object of the calendering was to produce a gloss 
 upon the cloth. The plaintiff obtained a patent for " Improve- 
 ments in embossing and finishing woven fabrics and in the machi- 
 nery or apparatus employed therein." This title was subsequently 
 amended, so as to be in these words, "Improvements in embossing 
 and finishing woven fabrics." The specification enrolled by the 
 plaintiff alleged the invention to consist in the use of rollers having 
 any design grooved, fluted, engraved, milled, or otherwise indented 
 upon them. A disclaimer was afterwards filed, and stated that the 
 effect desired could only be produced by the use of a certain species 
 of roller not particularly described in the specification, namely, a 
 roller having circular grooves round its surface ; and the use of aU 
 other rollers was disclaimed. The amended claim was for "the 
 employment of grooved, fluted, or indented rollers of hard metal, 
 or other suitable material, driven at a greater speed than the bowl 
 or bowls connected with them, so as to exert a rubbing or friction 
 upon the fabric submitted to their action, and thereby produce an 
 indefinite variety of pattern, as well as a bright finish or lustre," 
 &c. Lord Cranworth : " It is not every useful discovery that can 
 be made the subject of a patent, but you must show that the dis- 
 covery can be brought within a fair extension of the words, ' a new 
 manufacture.' Now how is this possible to be called ' a new manu- 
 facture ' ? T, as a manufacturer, have my roller, which I am in the; 
 habit of rolling upon a bowl (if that is the proper expression) ; the 
 fabric passing between the two at equal velocities. Then I can 
 impress my pattern upon it. I have my roller without any pattern 
 
Afjplication to an Analogous Purpose. 537 
 
 engraved upon it ; I can impress that at an unequal velocity, and 
 it will calender. But I do not do them both at the same time, 
 because I suppose that in so doing I shall tear my fabric ; and I 
 rightly so suppose, until the plaintiff makes the discovery that 
 there is one particular sort of pattern which may be produced 
 without tearing the fabric. Now that is a very useful discovery ; 
 but it would be strange to say that that is a new manufacture, and 
 that, therefore, I am to be deprived of the most useful way of using 
 my roller. There is nothing new in the invention, except that I 
 now know what I did not know before, that by a particular use of 
 it I shall obtain a result which I did not know before, that I could 
 obtain." (11 H. L. Gas. 223 ; 20 Gom. B., N. S. 28 ; 13 L. T. Bep., 
 N.S.I; 35 L. J., G. P. 49.) 
 
 (p) Jordan v. Moore. [1866] 
 
 The plaintiff obtained a patent for " certain improvements in the 
 Construction of ships and other vessels navigating on water." The 
 first and most important claim in the specification was " for the 
 combination of an iron frame, with an external covering of timber 
 planking for the sides, bilges, and bottoms." The Court construed 
 this claim to be a claim for planking with timber any iron frame 
 of a ship. Byles, J., delivering the judgment of the Court, said : 
 " Iron and wood being both of them materials long used for the 
 construction of the frame and coating of vessels, can the application 
 of wooden planking to the iron frame of a vessel (without any 
 peculiarity in the nature of. that planking) be the subject of a 
 patent ? We think it cannot. It is not only the substitution of 
 one well-known and analogous material for another, that is, wood 
 for iron, to effect the same purpose on an iron vessel, but it is the 
 application of the same old invention, namely, planking with 
 timber, which was formerly done on a wooden frame to an analo- 
 gous purpose, or rather the same purpose, on an iron frame. In 
 this view of the case the recent decision of the Exchequer Chamber, 
 and of the House of Lords, in Harwood v. The Great Northern Bail- 
 way Company, appears to us to be in point, and decisive for the de- 
 fendant." (L. Bep., 1 C. P. 624; 12 Jur., N. S. 766; 35 L. J., 
 G. P. 268 ; 14 W. B. 769.) 
 
 (g) Parkes v. Stevens. Ch. [1869] 
 
 James, Y.-C, said : " I am clearly of opinion that there can be 
 no patent right in the substitution of a slide for a hinge, whether 
 applied to the door of a house, the door of a carriage, or tlie door 
 of a lamp or lantern, whether large or small, suspended or not 
 suspended. It was hardly contended before me that the introduc- 
 tion of the door alone would have been sufficient to sustain a 
 patent ; but it was contended that because it was, as alleged, a 
 novel part of a novel combination and arrangement, it was so pro^ 
 tected. To say that a patent for an entire combination is a valid 
 patent for a part, when that part would not of itself be patentable, 
 is in my judgment, a reductio ad ahmrdum of the supposed principle 
 of Lister v. Leather." (L. B., 8 Hq. 367 ; 38 L. J., Gh. 631.) 
 
538 SUBJECT MATTEE: 
 
 Judgment affirmed on appeal. — Hatherley, L.O., held, that th© 
 adaptation of a eliding door to a spherical lamp, sliding doors 
 having previously been applied to cylindrical lamps and to other 
 glazed surfaces, cannot of itself he the subject of a patent. (L. B,., 
 5 Ch. 36 ; 18 W. B. 233 ; 22 L. T. Bep., N. S. 636.) 
 
 (f) Tatham v. Dania. [1869] 
 
 A patentee must show not merely newness, in the sense of doing 
 a thing which has not been done before, but he must show newness 
 in the shape of novelty by producing a thing which requires some 
 exertion of mind that could properly be called invention. To apply 
 an old tool to a new material could not be the subject of a patent, 
 although all mankind had been previously using another sort of 
 tool which produced a much inferior effect, and although, therefore, 
 the application of the other tool had the merit in it that it produced^ 
 a useful result in the easier working of a material to which that 
 tool had not been applied before, but inasmuch as the tool has been 
 used for an analogous purpose to that which all mankind knew it 
 was useful for before, although the application was new, yet it was 
 not a novelty in the sense of invention so as to sustain a patent. 
 (Griff. 213.) 
 
 («) Bamlett v. Pickslet. [1875] 
 
 Where the invention claimed is the application of a known 
 machine to a fresh purpose, the question is, Is that or is it not a 
 cognate purpose ? Crane v. Price (see p. 502) can only be upheld, 
 if at all, on the ground that there a new product was produced of 
 a different class and character. (Griff. 40.) 
 
 (t) Hill v. Tombs. [1881] 
 
 The use of a guide in a frilling machine for the purpose of 
 keeping down the work is not good subject-matter, because guides 
 of similar character have been employed in many other machines. 
 (John. 82.) 
 
 (u) Cropper v. Smith and Hancock. C. A. [1884] 
 
 The plaintiff's patent was for improvements in lace machines, 
 and the third claim was for a central longitudinal plate connecting 
 the end standards : — Held, that what was claimed was a mere 
 application of a plate to tie standards, and not an intelligent re- 
 arrangement of the lace machine to effect that application, and 
 that the patent was therefore void. (1 0. M. 81.) 
 
 (») Sharp v. Beaube. [1886] 
 
 The application of cardboard to the construction of window 
 blinds is not good subject-matter. (3 O. B. 193.) 
 
 (w) Albo Carbon Light Company v. Kidd. [1887] 
 
 In an action for infringement of a patent relating to the use of 
 solid naphthaline for enriching gas, it appeared that other forms of 
 naphthaline were in common use for that purpose, and that solid 
 naphthaline was, at the date of the patent, a well-known commercial 
 
Amplication to an Analogous Purpose. 539 
 
 article, and could be used for enricliing gas in the form in wliich it 
 was on the market: — Held, that the alleged invention was not the 
 subject of a patent. (4 0. B. 635.) 
 
 (u) Oddt v. Smith. [1888] 
 
 A method of holding strips of leather for covering metallic rollers 
 by means of spiked bars held not to be subject-matter for a patent. 
 (5 0. B. 503.) 
 
 (v) SiDDELL V. ViCKERS. C. A. [1888] 
 
 Cotton, L.J. : " None of the cases which have held that you 
 cannot claim a patent for applying an old machine to an analogous 
 purpose will apply where there is a new machine, although that 
 new machine does contain, as most new machines must do, old and 
 well-known mechanical appliances." (5 0. B: 416 at p. 430.) 
 
 (lo) TicKELPENNY V. Aemt AND Navy Co-operative Stores. [1888] 
 The use of iron columns, with water-tight joints hollow and 
 filled with water to support the girders carrying the floors of a 
 building, is not good subject-matter. (5 0. B. 405.) 
 
 (x) LoNGBOTTOM V. Shaw. C. A. [1889] 
 
 The plaintiff's patent was for improvements in frames for holding 
 pile or other fabrics. Such machines had long been made of a 
 frame with a triangle at the end, in the inside of which hooks were 
 fixed, from which the pile or material was suspended. These hooks 
 were liable to bend, and so cause risk in fastening up the pile fabric 
 on them, and, to avoid this, the plaintiff proposed to make rows of 
 hooks firmly fixed on a bar in either of three ways described, and 
 then to fasten the bar to the frame. It was proved that the new 
 machine was a cheaper and better article : — Meld, that there was 
 not sufficient subject-matter in it to support a patent, as the 
 fastening of hooks firmly on to a bar was old, and that this was, 
 therefore, only a new application of an old thing to produce an old 
 result. (5 0. B. 497 ; & 0. B. 148, 510.) 
 
 (a;*) MoRSAN v. Windover. H. L. [1890] 
 
 The mere adaptation to a new purpose of a known material or 
 appliance, if that purpose be analogous to a purpose to which it 
 has already been applied, and if the mode of application be also 
 analogous, so that no inventive faculty is required, and no inven- 
 tion is displayed in the manner in which it is applied, is not the 
 subject-matter of a patent, although it may be true that it is 
 accompanied by advantages not thought of or practised before. 
 At the date of the plaintiff's patent for improvements in carriages 
 there were in common use three different arrangements of springs ; 
 in one the body rested on four C-shaped springs, the two front 
 springs being secured to a perch rigidly connected with the forei 
 axle ; in another the body rested on four elHptical springs, two 
 being in rigid connection with each axle ; in the third the front 
 rested upon two elliptical springs, while the back rested upon two 
 composite springs, half C-shaped and half elliptical, which were 
 fastened to the axle in the same manner as the elliptical springs. 
 
540 SUBJECT MATTEE : 
 
 the elliptical ends being placed below the body of the carriage. 
 The alleged invention substantially consisted in the substitution 
 of composite for elliptical springs in the fore part of the carriage, 
 and in attaching them to the fore axle in the same way in which 
 they were previously attached to the hind axle, except that the 
 C end of the spring was turned forwards : — Held, that this involved 
 no ingenuity, and was not good subject-matter. (7 0. B. 131.) 
 
 (a;) Leadbeater v. Kitchin. C. A. [1890] 
 
 The plaintiff's specification described improvements in guards to 
 prevent accidents where belts and pulleys, and a:lso where geared 
 wheels were used : — Held, that the claim included guards both for 
 geared wheels and belts, and was therefore too wide, and that even 
 if confined to guards as applied to belts, it was only for the use of 
 an old thing for an analogous purpose. (7 O. B. 235.) 
 
 Principle. 
 
 (y) BoTjLTON V. Bull. [1795] 
 
 Eooke, J. : " The term ' principle ' is equivocal ; it may denote 
 either the radical elementary truths of a science, or those conse- 
 quential axioms which are founded on radical truths, but which 
 are used as fundamental truths by those who do not find it expe- 
 dient to have recourse to first principles." (2 H. Bl. 479.) 
 Heath, J. : " The Marquis of Worcester discovered, in the last 
 century, the expansive force of steam, and first applied it to 
 machinery. As the original inventor he was clearly entitled to a 
 patent. Would the patent have been good applied to all machinery,- 
 or to the machines which he had discovered ? The patent decides 
 this question. It must be for the vendible matter, and not for the 
 principle. Another objection may be urged against the patent, 
 upon the application of the principle to an old machine, which is, 
 that whatever machinery may be hereafter invented would be an 
 infringement of the patent, if it be fouuded on the same principle. 
 If this were so it would reverse the clearest positions of law 
 respecting patents for machinery, by which it has been always 
 holden, that the organisation of a machine may be the subject of a 
 patent, but principles cannot. . . . Indeed it seems impossible to 
 specify a principle, and its application to all cases, which famishes 
 an argument that it cannot be the subject of a patent." (lb. 483.) 
 Mr. Justice BuUer : " The very statement of what a principle is, 
 proves it not to be a ground for a patent. It is the first ground 
 and rule for arts and sciences, or in other words, the elements and 
 rudiments of them. A patent must be for some new production 
 from those elements, and not for the elements themselves." (J6. 
 485.) (2 H. Bl. 463 ; 1 Carp. P. G. 117 ; Bav. P. C. 162.) 
 
 (z) JuPE V. Peatt. [1837] 
 
 Alderson, B., said : " You cannot take out a patent for a prin- 
 ciple ; you may take out a patent for a principle coupled with the 
 paode of carrying the principle into effect, provided you have not 
 only discovered the principle, but invented some mode of carrying 
 it into effect. But then you must start with having invented 
 
Principle. 541 
 
 some mode of carrying the principle into effect ; if you have done 
 that, then you are entitled to protect yourself from all other modes 
 of carrying the same principle into efleot, that being treated by the- 
 jury as piracy of your original invention." (1 Weh. P. 0. 146.) 
 
 (a) Neilson v. Haefoed. [1841] 
 
 Aldersoh, B. : "I take the distinction between a patent for a 
 principle and a patent which can be supported, is, that you must 
 have an embodiment of the principle in some practical mode 
 described in the specification of carrying the principle into actual, 
 effect, aud then you take out your patent, not for the pilnoiple, but 
 for the mode of carrying the principle into effect." (1 Weh. P. G., 
 342.) "There is no difference between (claiming) a principle to 
 be carried into effect in any way you will, and claiming the prin.-" 
 ciple itself." (lb. 355.) 
 
 (b) The Housbhill Company v. Neilson. [1843] 
 
 Lord Justice Clerk Hope : "A patent cannot be taken out solely 
 for an abstract philosophical principle — for instance, for any law of 
 nature, or any property of matter, apart from any mode of turning 
 it to account in the practical operations of manufacture, or the 
 business, and arts, and utilities of life. The mere discovery of 
 such a principle is not an invention, in the patent-law sense of the 
 term. Stating such a principle in a patent may be a promulgation 
 of the principle, but it is no application of the principle to any 
 practical purpose. And without that application of the priaoiple 
 to a practical object and end, and without the application of it to 
 human industry, or to the purposes of human enjoyment, a person' 
 cannot in the abstract appropriate a principle to himself. But a' 
 patent will be good, though the subject of the patent consists in 
 the discovery of a great, general, and most comprehensive prin- 
 ciple in science or law of nature, if that principle is by the specifi- 
 cation applied to any special purpose, so as thereby to effectuate a 
 practical result and benefit not previously attained. (1 Weh. P. G. 
 683.) ... A claim for all modes of applying the principle to the 
 purpose specified, according to or within a general statement of 
 the object to be attained, and of the use to be made of the agent to 
 be so applied, is no objection whatever to the patent. That the 
 application or use of the agent for the purpose specified, may be 
 carried out in a great variety of ways, only shows the beauty, and 
 simplicity, and comprehensiveness of the invention, (ifc. 684) , . . 
 I state to you the law to be, that you may obtain a patent for a 
 mode of carrying a principle into effect ; and if you suggest and 
 discover, not only the principle, but suggest and invent how it 
 may be applied to a practical result by mechanical contrivance and 
 apparatus, and show that you are aware that no particular sort or 
 modification, or form of apparatus, is essential, in order to obtain' 
 benefit from the principle, then you may take your patent for the 
 mode of carrying it into effect, and are not under the necessity of 
 describing and confining yourself to one form of apparatus. If 
 that were necessary, you see what would be the result ? Why, that 
 a patent could hardly ever be obtained for any mode of carrying 
 a newly-discovered principle into -practical results, though- the 
 
542 SUBJECT MATTEE: 
 
 most valuable of all discoveries. For the best form and shape or 
 modification of apparatus cannot, in matters of such vast range, 
 and requiring observation on such a great scale, be attained at 
 once ; and so the thing would become known, and so the right 
 lost, long before all the various kinds of apparatus could be tried. 
 Hence you may generally claim the mode of carrying the principle 
 into effect by mechanical contrivance, so that any sort of apparatus 
 applied in the way stated will, more or less, produce the benefit, 
 and you are not tied down to any form." (lb. 685.) (1 Web. P. C. 
 673 ; 9 G.dF. 788.) 
 
 (c) Crosslby v. Pottek. N. P. [1853] 
 
 The title was for " certain improvements in weaving figured 
 fabrics." The patentee in his specification says : " My improve- 
 ments in weaving figured fabrics apply to those particular kinds 
 of fabric which have a terry or raised loop surface, such as coach 
 lace, Brussels carpeting, velvets, and other woven goods having 
 terry or raised surfaces, either plain or figured." The evidence 
 went to show that without additional parts, which were not men- 
 tioned, the machine described in the specification was capable of 
 making coach lace, but not of making either carpet or velvet 
 goods. Pollock, C.B., in directing the jury, said : " The truth 
 appears to me to be this, that the patent is very much like what 
 has often been attempted, viz., to take out a patent for a principle, 
 which the law will not allow. Any man who takes out a patent 
 must take it for a manufacture. It is very true that patents are 
 continually taken out for what are called ' methods,' or ' pro- 
 cesses ' ; but the real object of the patent, the real end that is 
 secured by the statute, the matter that is alone mentioned in it 
 capable of being made the subject of a patent, is a new manu- 
 facture ; and everybody who takes out a patent under the name of 
 a process, really takes it out for that which is the result of the 
 process, for the thing that is manufactured, or the process by 
 which it is produced." (Macrory's P. G. 240.) 
 
 (d) Patteeson v. The Gas Light and Coke Comp. H. L. [1877] 
 
 The discovery of a more skilful and efficient mode of working a 
 process, already known and in use, is not the proper subject of a 
 patent. (2 Ch. D. 812. Affirmed in H. of L., 3 App. Gas. 239.) 
 
 A patentee claimed, '' First : The employment of sulphides of 
 calcium in separate purifiers, as a means of purifying coal gas 
 from sulphur existing in other forms than in that of sulphuretted 
 hydrogen. Secondly : A method or system of employing lime puri- 
 fiers in the manner hereinafter described, whereby the contents of 
 all the said purifiers, or of any required number of them, can be 
 converted into sulphides of calcium, and also (if required) be 
 maintained in that condition." James, L.J., delivering the 
 judgment of the Court of Appeal (James, Baggallay, L.JJ., and 
 Lush J.), said : " There is nothing in this (the first claim) but 
 the enunciation of a chemical truth, that pure sulphides of calcium 
 will absorb the sulphur compounds. The plaintiff believed that 
 he had discovered that chemical truth, although it had been 
 
Principle. 543 
 
 taught for many years in many 'books, and was well known to 
 chemists. There is no invention of any particular process or 
 tneans of employing the pnre sulphide of calcium. If pure 
 sulphide of calcium is to be used, it must he used in some separate 
 holder of it, and the thing holding it would be a separate purifier, 
 and there is nothing, therefore, in any previous part of the 
 Specification to limit the universality of the claims to the employ- 
 ment of sulphides of calcium for the removal of sulphur in other 
 forms than sulphuretted hydrogen. It is ohviously impossible to 
 support such a claim as that, which was plainly based on the 
 plaintiffs mistaken idea that he had discovered that peculiar 
 property in sulphide of calcium." (2 Gh. D. 833.) 
 
 Referring to the second claim, the Court said: "There is in 
 that no suggestion of any new apparatus — of any new process. 
 There is no device or scheme of any kind. Lime purifiers in 
 succession were in general, almost universal use, wherever lime 
 could be freely used. . . . "What he (the plaintiff) claims to 
 have discovered is, that if the carbonic acid, which is the first 
 thiiig taken up by the lime, is not wholly taken up at the begin- 
 ning, and is allowed to enter the last purifier or purifiers, it in 
 fact poisons the latter, decomposes the sulphide of calcium already 
 formed, disengages the other sulphur absorbed by the sulphide, 
 and of course fills the gas again with the sulphur impurities 
 which had been removed. This is a very valuable working 
 caution and direction, but it is impossible to make anything, 
 more of it than a working caution and direction. It really 
 amounts to nothing more than a direction to be sufBciently liberal 
 in the use of the caustic lime in the first stage, and an instruction 
 that the moment it is so far carbonated as not to arrest the 
 carbonic acid, it should be removed and a fresh supply of lime 
 got. It may be a direction and instruction of the greatest possible 
 value and utility, but it is utterly impossible to make such a 
 direction and instruction, however valuable, the subject of a 
 patent." (16.834.) 
 
 In the House of Lords,. Lord Blackburn said : " The appellant 
 appears, from what he says in his specification, to be of opinion 
 that, if he first discovered the theory and reason of that which 
 had before been done empirically, he is entitled to a patent. 
 I need hardly p<iint out that this is a mistake; if, by reason 
 of knowing the theory, he is enabled to make some improve- 
 ments, he may take out a patent for the improvements, but 
 he cannot take out a patent to prevent others using what they 
 had used before, though only empirically." (3 App. Gas. 246.) 
 
 (e) Badische Anilin und Soda Fabeik v. Levinstein. H. L. [1887] 
 A patent cannot be granted for a principle alone, but may be 
 granted for a principle coupled with a process by which thei 
 principle may be carried into effect : — Held, therefore, that the 
 principle on which the plaintiff's method of producing colouring 
 matters was based being new, and the process being sufBciently 
 described to be commercially worked, the patent was valid. (24 
 Ch. D.156; 12 App. G. 710.) 
 
544 SUBJECT MATTEE. 
 
 (f) Automatic Weighing Machine Company !;. Knight. C. A. [1889] 
 
 Cotton, L.J. : Tou cannot take out a patent for a principle, 
 you may take out a patent for a principle coupled with the mode 
 of carrying the principle into effect, provided you hav« not only 
 discovered the principle but invented some mode of carrying it 
 into effect. . . . Where there is a principle first applied in a 
 machine capable of carrying it into effect, the Court looks more 
 narrowly at those who carry out the same principle and say 
 they do it by a different mode, and looks to see whether in effect, 
 although the mode is not exactly the same, it is only a colourable 
 difference." (6 0. B. 297, at p. 304.) 
 
 (g) Thomson v. Mooee. Ir. C. A. [1889] 
 
 Palles, L.C.B. : " Although a principle, as distinct from the 
 machine by which it is proposed to be applied, cannot be the 
 subject of a patent, the consideration of the principle sought to 
 be so applied may be material in determining the essence of that 
 invention." (6 0. B. 426, at p. 450.) Affirmed in H. of L. (7 0. B. 
 325) 
 
 Substitute for Attorney-General may petition for revocation if authorised. 
 Patents Act, 1883, sect. 26 (4) b., p. 402. 
 
 Cases as to Applications for AutJiority. 
 
 (h) Bell and Coleman's Patent. 
 
 Authority was refused while an action for infringement was 
 pending in Scotland. {Griff. 320.) 
 
 (i) Martin's Patent. 
 
 Where an application for authority is abandoned the law officer 
 has no power to give costs. (Griff. 320.) 
 
 (J) Siddell's Patent. 
 
 The application for authority was directed to stand over on 
 Siddell's undertaking to bring an action. {Griff. 320.) 
 
 (7c) Watling's Patent. 
 
 . The patentee had notice and did not appear, and authority was 
 granted. {Griff. 320.) 
 
 (T) Goulard and Gibbs' Patent. 
 
 Authority was given without notice to the patentees. {Griff. 
 320.) 
 
 (m) Eothwell's Patent. 
 
 Although an application to amend was pending, authority was 
 given without notice to the patentee, who had abandoned an action 
 for infringement against the applicant. {Griff. 320.) 
 
 Substituted Service granted, p. 40 Qe). 
 
 Substitution of new ingredients is not patentable, jip. 528 (a), 530 (il), 538 
 
 (") (0- 
 
THEEATS. 545 
 
 SufiBciency of Specification. See under Specification, pp. 421-436, 
 
 Superiority of Materials is not good subject-matter, pp. 530 (d), 537 (p). 
 
 Supply of anticipating publication, p. 545 (g). 
 {g) PiCKAED AOT) CUEEY V. PeESCOTT. [1890] 
 
 A French periodical containing what was admittedly an antici- 
 pation, was supplied to one person before the date of the plaintiff's 
 patent. Held, that in the absence of further e'vidence this was 
 fatal. (7 0. B. 361.) 
 
 Tenants in Comxaon, right to sue descends to survivor, p. 287 (s) 
 right to work patent vested in trustee for, p. 207 (J). 
 
 Terms of grant of letters patent, pp. 148, 149. 
 
 Terms imposed on extension, pp. 136-139. 
 
 Terms in specification to be explained by jury, pp. 461 (p), 470 (p). 
 
 Threats, 
 
 person aggrieved by, may bring action, Patents Act, 1883, sect. 32, p. 546 
 section not to apply if person making, prosecutes action with due dili- 
 gence, sect. 32, p. 546. 
 
 Cases as to, he/ore the Act of 1883, p. 546 
 action formerly did not, lie unless mala fides was shown, p. 546 (K) 
 or if defendant bondfi.de intended to follow up his threats, p. 547 («) {k) 
 or if he undertook to do so, p. 547 (/) 
 or if made with reasonable and probable cause, p. 547 (Jc) 
 or if threatening statements were true, p. 547 (I) 
 or if defendant believed them to be true, p. 548 (m) 
 circular issued bond fide not restrained by interim injunction unless in 
 
 violation of contract, p. 548 (n) 
 validity of patent was not in issue, p. 552 (y). 
 
 Cases since the Act of 1883, p. 549 
 plaintiff is person aggrieved when be is threatened, sect. 32, p. 546 
 
 or bis customers, p. 553 (a) 
 
 or when customers of his licensees are threatened, p. 553 (a) 
 injunction granted, 
 
 where threats were admitted, p. 554 (c) 
 
 where plaintiff made prima facie case of non-infiringement, 
 p. 551 (m) (k) 
 
 although not proved, p. 551 (m) (x) 
 
 motion adjourned where defendants had commenced action first,, 
 p. 550 (s) 
 
 or where defendant commenced cross-action, pp. 550 (r), 554 (e) 
 threats by advertisement, p. 553 (a) 
 
 or by circular, p. 551 (w) 
 
 or by soUoitor's letter, pp. 553 (z*), 554 (e) 
 
 or by private letter, p. 550 (t) 
 action to bring defendant within the proviso, p. 551 (w) (x) 
 
 must be prosecuted without delay, pp. 549 (p), 550 (r), 554 (d), 555 (g) 
 
 must be of same character as that threatened, pp. 551 (x), 554 (e) 
 
 need not be against person aggrieved, p. 551 (x) 
 
 but must test validity of patent or fact of infringement, p. 551 (a;) 
 
 abandonment of when clear that it would fail, p. 555 (^g) 
 
 2 N 
 
546 THREATS : 
 
 valirlity of patent is in issue, p. 552 (ji) 
 
 procedure in action to restrain, 
 
 particulars of objection to be given by plaintiff, p. 553 (o) 
 after defendants have stated on what patents they rely, p. 553 (a) 
 certificate that validity came in question granted, p. 553 (z*) 
 onus on defendants when threats were admitted, p. 554 (c) 
 form of order for injunction, pp. 551 (x), 553 (V) 
 
 delay, three months is prima faeie not too great, p. 555 (g) 
 
 damages, pp. 550 (i), 552 (j/), 554 (c) 
 
 costs, pp. 552 {y), 554 (e). 
 
 Patents Act, 1883, sect. 32. Where any person claiming to be the 
 patentee of an invention, by circulars, advertisements, or otherwise, threatens 
 any other person with any legal proceedings or liability in respect of any 
 alleged manufacture, use, sale or purchase of tlie invention, any person or 
 persons aggrieved thereby may bring an action against him, and may obtain 
 an injunction against the continuance of such threats, and may recover such 
 damage (if any) as may have been sustained thereby, if the alleged manu- 
 facture, use, sale, or purchase to which the threats related was not in fact an 
 infiingement of any legal rights of the person making such threats : 
 
 Provided that this section shall not apply if the person making such 
 threats with due diligence commences and prosecutes an action for mfringe- 
 ment of his patent. 
 
 Gases hefore the Act o/ 1883. 
 Qi) Ween v. Weild. [1869] 
 
 Eule to set aside a nonsuit. The declaration contained counts to 
 the effect that the plaintiffs made and sold spooling-maohines, and 
 that the defendant falsely and maliciously wrote to persons in 
 treaty v^ith the plaintiffs for such machines that they were infringe- 
 ments of a patent of the defendant's, and that if they were used 
 he would claim royalties for their use, and, if not paid, take legal 
 proceedings ; in consequence of which the plaintiffs lost the sale of 
 their machines. There was no allegation that the defendant did 
 this without reasonable or probable cause, nor, except indirectly, 
 that the defendant had any patent. Plea, not guilty, and issue 
 thereon. At the trial the plaintiffs, after proving the facts stated 
 in the declaration, tendered evidence to show that the defendant's 
 patent was void for want of novelty, that the defendant himself 
 knew the facts which would render his patent void, and that the 
 plaintiffs' machines were no infringement of the defendant's patent. 
 
 Lush, J., was of opinion that, inasmuch as the defendant's patent 
 was still subsisting and not set aside on scire facias or otherwise, 
 this evidence was immaterial. A rule for a new trial was subse- 
 quently discharged, when it was Held, (1) that the evidence in 
 question was immaterial to the issue raised ; and (2) that the 
 action would not lie unless the plaintiffs could affirmatively prove 
 that the defendant's claim was made mala, fide. (L. ij., 4 Q. JB. 
 730 ; 38 L. J., Q. B. 327 ; 20 L. T. Bep., N. S., 1007.) 
 
 (i) Dalziel v. Eailwat Carriage and Steamboat GiSLiGHT Company. 
 
 Malins, Y.C., expressed an opinion : " that a man has no right 
 to go about boasting of a patent and not attempt to try its 
 validity." (Not reported. Cited L. B., 13 Eq. 358.) 
 
Cases before the Act of 1883. 547 
 
 («■) EoLLiNS V. HiNKS. Ch". [1872] 
 
 There is no presumption in law in favour of the validity of a 
 patent, and therefore a patentee is not entitled to publish state- 
 ments of his intention to institute legal proceedings, in order to 
 deter persons from purchasing alleged infringements of his patent, 
 if he has no iond fide intention to follow up his threats by taking 
 such proceedings, and the Court will in such case restrain him 
 from making such publication. (L. B., 13 Eq. 355 ; 41 L. J., Gh. 
 358.) 
 
 A person alleging the invalidity of a patent is not bound to 
 assert his claim by scire facias, in order to establish his right to 
 restrain the publication of statements by the patentee, threatening 
 with legal proceedings persons buying articles of his manufacture 
 alleged to be infringements of the patent. (lb-) 
 
 (j) AxMANN V. Lund. Ch. [1874] 
 
 The Court wiU restrain a patentee from issuing circulars threat- 
 ening legal proceedings against infringers, unless he will undertake 
 to commence proceedings to assert the validity of his patent ; and 
 the fact that the party seeking the aid of the Court was formerly a 
 licensee of the patent under the patentee, and had himself con- 
 curred in issuing similar circulars, does not prevent the Court 
 interfering after the expiration of the licence. Bollins v. Sinks 
 foUowed. (L. B., 18 Eq. 330.) 
 
 (Jt) Halset V, Brotherhood. C. A. [1881] 
 
 A patent is prima facie good as long as it stands, and the person 
 who alleges it is not good must prove it. Therefore, a patentee 
 who issues notices threatening actions for infringement, cannot be 
 restrained merely because he refuses to follow up his threats by an 
 action, but only if the statement that there is an infringement is 
 untrue to his knowledge, or is not made bond fide, or is proved to be 
 untrue at the time of the action at which the injunction was sought. 
 (16 Ch. D. 514 ; 19 Gh. D. 386.) The defendant was the holder of 
 a patent for engines, the validity of which was not impeached. 
 BaggaUay, L.J. : " I take it to be the result of the case to which 
 I have refefred {Wren v. Weild), that he (the defendant) was 
 entitled to state that the engines manufactured by the plaintiffs 
 were infringements of his patent, and to threaten proceedings 
 against any person in respect of such infringement, provided ho 
 observed the rule that those threats must have been made with 
 reasonable and probable cause; unless they are made with 
 reasonable and probable cause, there would be the inference that 
 they were maliciously made." (19 Gh. D. 390.) 
 
 (Z) BuENETT V. Tak. [1882.] 
 
 The plaintiff brought an action to restrain the defendant from 
 issuing notices to plaintiif's customers, that plaintiff, in selling 
 goods, was infringing defendant's rights, and from threatening 
 such customers with legal proceedings in case they should purchase 
 
 2 N 2 
 
548 THEEATS : 
 
 suoli goods, and applied for an interim injunction : — 'Held, tliat as 
 the plaintiff had not satisfied the Court that the statements made 
 by the defendant were false, there was no evidence of maid fides, 
 and therefore the injunction was refused. (45 L. T. 743.) 
 
 (m) Sugg v. Bray. [1881-6] 
 
 In 1881 the plaintiff brought an action for an injunction to 
 restrain the repetition of statements by the defendants that the 
 plaintiff infringed the defendants' patent, which the plaintiff 
 alleged were false and maliciously made, and for damages. In 
 1883 the plaintiff applied for leave to amend, by adding a claim 
 for a declaration that he had not infringed the defendants' patents, 
 or if he had, ihat those patents were bad. Leave was refused, with 
 costs. The defendants did not commence any action in respect of 
 the alleged infringements, but they contended that they had 
 reasonable and probable cause for making the statements : — UsZc?,, 
 that the plaintiffs had nut, in fact, infringed the defendants' patent, 
 and that the statements were unfounded ; but that the plaintiffs 
 had not proved that the defendants had not made the statements' 
 hond fide, in support of rights which they believed they had, and 
 that therefore the plaintiffs were not entitled to damages nor to an 
 injunction. 
 
 The 32nd section of the Act of 1883 does not apply to threats 
 made before it came into operation. (1 0. B. 45 ; 2 0. iJ. 223 ; 
 Griff. 210.) 
 
 (w) SociiiTfis Anonymes des Manufactuhes de Glaces v. Tilghman'&' 
 Patent Sand Blast Company. C. A. [1883] 
 
 The defendants, who were owners of patents in Belgium and 
 England for an invention for making globes, by deed granted a 
 licence to plaintiffs to use and employ the invention at their manu- 
 factory (which was in Belgium), but not elsewhere. The plaintiffs' 
 manufactured articles under this licence in Belgium, and sold them 
 in England, and the defendants issued a circular to the trade,' 
 warning persons that such importation and sale would be a viola- 
 tion of the English patent. The plaintiffs' application for an 
 injunction to restrain such issue was refused. Where a trade- 
 circular is issued hond fide, an interim injunction will not be granted 
 to restrain it, unless it is in violation of some contract,- however' 
 much the balance of convenience may be in favour of granting it. 
 (25 Gh. B.l; 53 L. J. Ch. 1.) 
 
 (o) Shaep v. Beauer. Beauer v. Sharp. [1885-6]. 
 
 The plaintiff, Sharp, issued a circular, threatening proceedings 
 against persons infringing his patent for folding-screens. Braner, 
 a maker of folding-screens in Germany, commenced an action to 
 restrain the issue of this circular to his customers, or persons who 
 might become his customers, whereupon Sharp commenced an 
 action against Brauer, and his agent in England, for infringement. 
 The latter action was heard first, and the patent was held invalid, 
 for want of novelty. On the first action coming on for trial, Held, 
 
Cases since the Act of 1883. 549 
 
 ■that at the time tlie circular was issued, the defendant had a right 
 to advertise himself as patentee, and that there was no evidence 
 of malice on his part. That, therefore, there could be no damages, 
 and no injunction. Section 32 was not referred to in the judg- 
 ment. In the circumstances, the action was dismissed without 
 costs, (a 0. iJ. 193; Griff. 205.) 
 
 Cases since the Act of 1883. 
 
 (jp) Barnett v. Barrett's Screw-Stopper Company. [1884] 
 ' The defendant company issued a circular, stating that a " so 
 called " patent stopper of Barnett and Poster was an infringement 
 of their patent, and that they were about to take proceedings 
 against Barnett and Foster, and every one who used the stopper. 
 Barnett and Foster commenced an action under section 32, and 
 moved for an interlocutory injunction. It appeared that the 
 defendants were exclusive licensees of the patent for an area of 
 twelve miles round London, and that the patentee had commenced 
 an action against Barnett and Foster for infringement, and that 
 the defendants were to be joined as co-plaintiffs in that action. 
 Pearson, J., .said : "I do see this, that a motion of this kind being 
 niade a defendant might, simply to stave off proceedings, issue a 
 wiit and nothing more, and then, when it had served his purpose, 
 he might discontinue the action and the Court might be in great 
 difficulties to know what to do. If a new motion were made, he 
 might say, ' I do not mean to continue writing any more letters 
 or circulars. You cannot get an injunction, because we have told 
 you we do not mean to write any more.' Therefore I think the 
 better course will be to adjourn this motion until the result of the 
 action is known, with liberty to apply, and reserving all questions 
 of costs." (1 O. B. 9, at p. 10 ; Griff. 47.) 
 
 (q) Barney v. United Telephone Company. [1886] 
 
 The plaintiff having advertised that he was prepared to supply 
 the Boult telephone, the directors of the defendant company issued 
 an advertisement, warning the public that they were advised that 
 the Boult telephone was an infringement of their patent rights, 
 and that proceedings would be taken to protect their rights. The 
 defendants' solicitors had refused to make the plaintiff sole 
 defendant in an action for infringement, on the ground that he was 
 not in a position to pay damages or costs. On motion for an inter- 
 locutory injunction, Chitty, J., said : " I will assume, for the pur- 
 pose of this judgment, that it comes within section 32. Under 
 that section the Court can grant an injunction against the con- 
 tinuance of this threat, and that I am now atked to dn. But the 
 section contains this condition : ' If the manufacture, use or sale 
 to which the threat relates is not, in fact, an infringement of any 
 legal right of the person making the threats.' Now it appears that 
 there is a serious question between the parties as to whether there 
 is, in fact, an infringement or not, . . . and that is a question which 
 I cannot decide on the present materials. That being so, there can 
 
'550 THEEATS: 
 
 be no injunction granted, because the plaintiff is unable td ptovfe 
 that there was not, in fact, an infringement, and he is not able 
 even to present to the Court such a case as would show that, pro- 
 bably even at the trial, that result would be brought about. 
 That being so, I have nothing to do with the proviso at the end." 
 (28 Cfh. D. 394; 52 L. T. 573; 33 W. B. 676; 2 0. B. 173; 
 Griff. 48.) 
 
 (r) Household and Eoshee v. Pairburn and Hall. [1884-5] 
 
 The plaintiffs, who were the maters of water elevators, com- 
 menced an action to restrain the defendants from continuing to 
 issue a circular cautioning the public against the use of such 
 elevators, as being infringements of the defendants' patents, and 
 gave notice of motion for an injunction. The defendants com- 
 menced a cross action to restrain the plaintiffs from infringing 
 their patents : — Held, that as there was no evidence of mala fides 
 on the part of the defendants, they ought not to be restrained 
 from issuing the circular until the action had been disposed of, 
 but that they must undertake to prosecute their action with due 
 diligence. The defendants, in fact, prosecuted their action as 
 leisurely as they could, and the plaintiffs again moved in the 
 original action for an injunction to restrain the issue. The in- 
 junction was granted. (51 L. T. Bep., N. S., 498 ; 1 0. B. 109 ; 
 2 O. B. 140; Griff. 131.) 
 
 («) Wilson and Co. «>. Walter E. Church Engineering Company. 
 [1885.] 
 
 The defendant company had commenced an action for infringe- 
 ment against the plaintiffs. The plaintiffs subsequently com- 
 menced an action under sect. 32, and applied for an injunction ex 
 parte on an affidavit that the defendants had claimed royalties on 
 machines supplied by the plaintiffs : — Held not to be a case for an 
 ex parte injunction, but that notice of motion must be given. 
 (2 0. B. 176.) 
 
 (t) Driffield Linseed Cake Company v. Waterloo Mills Cake 
 Company. [1886] 
 
 The words " Threats by circulars, advertisements, or otherwise," 
 in sect. 32, include threats by private letter to the person charged 
 with infringement, the words " or otherwise " not being restricted 
 to communications ejusdem generis with circulars or advertisements. 
 The solicitor to the defendants sent a letter to the plaintiffs alleging 
 an infringement of defendants' patents, and threatening pro- 
 ceedings. The plaintiffs asked for particulars. The defendants'^ 
 solicitors refused to give the details asked for, but again threatened 
 proceedings. No proceedings were taken, and in their defence to 
 this action the defendants at first alleged an infringement, but 
 afterwards struck out the allegation. A perpetual injunction was 
 granted, with costs. The plaintiffs further claimed damages, and 
 alleged that since the defendants' threats, they had stopped the 
 progress of certain n§w works. Their business had not been sus- 
 
Cases since the Aet of 1883. 551 
 
 pended : — Held, that thefe was no case for an inquiry as to damages. 
 (31 Gh. D. 638 ; 55 L. J., Oh. 391 ; 54 L. T. Bep., N. S., 210 ; 
 34 W. B. 360 ; 3 0. JJ. 46 ; Griff. 80 ; 2 T. L. B. 314.) 
 
 (tt) Walker v. Clarke. [1887] 
 
 On a motion for an interim injunction, under sect. 32, to restrain 
 threats, it is not necessary for the plaintiii', in every case as a 
 condition precedent, to prove that he has not infringed the de- 
 fendant's patent; hut the question is one of the balance of con- 
 venience and inconvenience, and the Court will decide according 
 to its opinion whether more harm will be done by granting or 
 refusing an injunction. (56 L. J., Ch. 239 ; 56 L. T. Sep., N.S. Ill; 
 3 T. L. B. 297 ; i 0. B. Ill ; 35 W. B. 245.) 
 
 (v) Goulard «. Lindsay. [1887] 
 
 The plaintiffs, having brought an action for infringement, 
 pending the trial issued advertisements, stating that in cun- 
 sequence of the continued infringement of their patent by the 
 defendants they had commenced an action against the defendants, 
 and that aotioDS would be commenced against all persons em- 
 ploying or using apparatus which was not according to the letters 
 patent without the leave of the patentees : — Seld, that notwith- 
 standing the proviso at the end of sect. 82, the plaintiffs were 
 not justified in issuing advertisements containing a positive 
 statement that defendants had infringed. (56 L. T. Bep., N. S., 
 606 I 4 0. B. 189.) 
 
 (w) PusEE Vesta Company v. Bryant and May. (No. 2.) [1887] 
 
 The plaintiffs having commenced an action for infringement, 
 asked for leave to apply to disclaim, and that, pending the decision 
 thereon, further proceedings might be stayed. Having obtained, 
 on terms, the order asked for, the plaintiffs sent circulars to cus- 
 tomers of the defendants, threatening legal proceedings. The 
 defendants, as the proceedings were stayed, did not bring in a 
 counter-claim, under sect. 32, but moved for an injunction to 
 restrain the threats : — Seld, that the Court had jurisdiction to 
 grant the injunction asked for. (56 L. T. Bep., N. S. 136 ; 
 3 T. L. B. 408.) 
 
 (x) Ohallender v. Eoyle. C. A. [1887] 
 
 Sect. 32 consists of two parts : the first part contains directions 
 as to what circumstances will enable a person threatened to obtain 
 judgment in an action ; the second part contains a proviso which 
 excepts certain cases from the section, so that if a case comes 
 within the proviso, it must be dealt with under the old law. The 
 fiist part contemplates a final judgment, and in order to obtain 
 an interlocutory injunction, the plaintiff must make out a p-imd 
 facie case, i.e. a case such that, if the evidence remains the same 
 at the hearing, it is probable that he will obtain a decree, and 
 unless he makes out such a c^se, an injunction will not be granted 
 on the mere balance of convenience and inconvenience. Prima facie 
 
552 THREATS: 
 
 the onus is on the plaintiff to show that what he did was " not an, 
 infringement of any legal right," and (semble) for that purpose, 
 he may call in question the validity of the defendant's patent. 
 
 Challender brought an action against Eoyle, under sect. 32, 
 to restrain Eoyle from issuing threats against persons selling 
 Challender's patent articles. After the issue but before service 
 of the writ, Eoyle commenced an action for infringement 
 against a company who were selling Challender's articles : 
 — Seld, that the case was within the proviso, for that in order 
 to bring the case within the proviso, the action need not be 
 against the person aggrieved, but may be any action to test 
 the validity of the patent, or the fact of infringement honestly 
 brought with reasonable diligence against any of the persons to 
 whom the threats have been made, and that in considering whether 
 such action is brought with due diligence, the time of issuing the 
 threats, and not the time when the party bringing the action first 
 knew of the alleged infringements, is the period to be looked at. 
 (36 Gh. J). 425 ; 3 r. £. B. 790 ; 4 0. iJ. 368.) 
 
 In this case the order made by Bristowe, V.-C, was substantially, 
 in the terms of the notice of motion, viz.; to restrain the defendant, 
 personally or by his servants, agents and workmen, by circulars, 
 letters, or otherwise, from threatening any person with legal 
 proceedings or liability in respect of the manufacture, use, sale, or 
 purchase, of a certain tap-union, of which the plaintiff was 
 patentee, and from interfering by such threats, or otherwise, with 
 the manufacture, use, sale, or purchase, of the plaintiff's invention. 
 (36 Ch. B. 427.) 
 
 {y) KuETZ V. Spence. C. A. [1887] 
 
 Formerly, in an action for an injunction against threats by a 
 person claiming the benefit of a patent, the two issues were : first, 
 the good faith of the person making the threat ; second, whether , 
 the person threatened was in fact infringing the patent. The 
 validity of the patent was .not in issue. (33 Gh. D. 581.) In an 
 action under sect. 32, the plaintiffs alleged that the defendant's 
 patent, which they were accused of infringing, was invalid. 
 
 Chitty, J., being of opinion that the words in sect. 32, " not in 
 fact an infringement of any legal rights," did not allow the 
 plaintiff to put in issue the validity of the patent, ordered the 
 allegation to be struck out. (33 Gh. D. 579.) Subsequently the 
 case was transferred to Kekewich, J., and the remarks in the case 
 of Challender v. Sioyle having meantime established a contrary 
 view of the law, and the time for appeal being passed, the 
 plaintiffs applied for leave to amend by again alleging the in-, 
 validity of the patent. The application was refused, but, on 
 appeal, leave to amend was given by the majority of the Court 
 of Appeal on the terms that the plaintiffs should pay solicitor and 
 client's costs of the application, and all costs incurred and wasted, 
 and that the defendants should have the same notice of objections, 
 and the same rights of beginning and replying as they would 
 have had if they had brought an action for violation of their 
 
Cases since th6 Act of 1883. 553 
 
 patent. _ (36 Ch. B. 770 ; 3 T. i. B. 827; 4 0. B. 427.) Ulti- 
 mately it was held that the patent was void, on the ground of 
 part of the invention claimed being impracticable, and that the 
 plaintiffs were entitled to an injunction, and forty shillings 
 damages. (5 0. B. 161.) (33 Ch.B. 579; 36 Gh.D. 770; 55 L.J"., 
 Gh. 919 ; 3 T. L. B. 827 ; 55 L. T. Bep., N.S., 317 ; 35 W. B. 26 ; 
 3 0.ii!.368; 5 0.22.161.) 
 
 (z) BuET V. Morgan and Co. [1887] 
 
 The plaintiff was a patentee of an invention for improvements 
 in carriage springs. The defendants wrote to customers of licensees 
 of the plaintiff, who had fitted the plaintiff's springs to carriages. 
 Stating that the springs were infringements of the defendants' 
 patents. The defendants were prosecuting an action for infringe- 
 ment against certain persons other than the plaintiff : — Held, that 
 the_ plaintff was a person aggrieved, within sect. 32, and was 
 entitled to an injunction, or an undertaking to abstain from 
 threatening. (4 0. B. 278 ; W. N. 1887, 123 ; 3 T. L. B. 666.) 
 
 (2*) Ceampton v. Patents Investment Company. 0. A. [1888] 
 
 In an action to restrain threats, the Court having held that the 
 defendants' patent was valid, and had been infringed, gave a 
 certificate that the validity of the patent came in question without 
 prejudice to the validity of such certificate. (5 0. B. 382.) The 
 words " or otherwise " in section 32 of the Patents Act are not 
 confined to matters ejusdem generis -with circulars or advertise- 
 ments, and may include threats made by a solicitor's letter. 
 (16. 393.) An appeal as to the question of validity was dismissed, 
 (6 0. B. 287.) 
 
 (a) Union Electeical Power and Light Company v. Electrical 
 Storage Company. C. A. [1888] 
 
 The defendant company caused a notice to be inserted immedi- 
 ately below the plaintiffs' advertisement in the Standard, to the 
 effect that the defendants were the owners of patents for various 
 specified modes of construction of secondary batteries, and that 
 every manufacturer or individual user of secondary batteries of 
 such construction, without licence from the defendants, rendered 
 himself responsible for such unlawful manufacture or use. The 
 defendants also sent threatening letters to the plaintiffs' cus- 
 tomers. The plaintiffs alleged that the defendants' patents 
 were all invalid, and applied for an injunction to restrain the 
 threats. The defendants applied for particulars of objections to 
 their patents. Ordered, that on the defendants giving a list of 
 the patents on which they intended to rely, the plaintiffs should 
 within three weeks deliver particulars of objections to the validity 
 of those patents. (38 Ch. D. 325 ; 6 0. B. 329.) 
 
 (6) Colley v. Hart. [1888 and 1890.) 
 
 Eorm of order to restrain threats in Challender v. Boyle, (36 Ch. D. 
 427), followed by North, J. In an action to restrain threats, when 
 
554 THREATS : 
 
 there is a doubt whetlier tlie thing does infringe -what the 
 defendant Calls his rights, the fact that the defendant does not 
 bring an action to assert his rights is a fact to he considered 
 in forming an opinion whether he has such rights ■ or not. (6 
 0. B. 17.) 
 
 (c) Ungae v. Sugg and Co. [1889] 
 
 Action for an injunction to restrain threats in respect of some 
 lamps supplied by the plaintiff and alleged to be infringements of 
 the Sugg patent. The threats were admitted, and it was held by 
 Huddleston, B., that on the pleadings the onus was on the 
 defendants. The jury was asked whether the lamps supplied by the 
 plaintiffs were substantially copies of the Sugg patent, and gave a 
 verdict for the plaintiff, and an injunction was granted with an 
 inquiry as to damages. (5 T. L. B. 373 ; 6 0. B. 337.) 
 
 (d) Herbueger ScfiWANDEE ET CiE. V. Sqtjiee. [1889] 
 
 The defendant. Squire, in an action to restrain threats, made 
 the threats in October, 1886, and September, 1887. The action 
 ■was commenced in October, 1887. In November, 1887, the de- 
 fendant commenced two actions against other persons, and in 
 December he counterclaimed for infringement : — Held, that he had 
 not shown due diligence- An injunction to restrain was granted 
 under sect. 32, although the claim was framed as if for slander of 
 title, and not under sect. 32. (6 0. B. 589 ; 6 0. B. 194,) 
 
 (e) Combined Weighing and Advertising Machine Company v. 
 
 Automatic Weighing Machine Company. [1889] 
 
 In consequence of two letters, dated September 21st, 1887, sent 
 by the solicitors of the defendant company, the plaintiff company, 
 on September 27th, 1887, having simply acknowledged the receipt 
 of one of the letters which was addressed to them, commenced this 
 action to restrain threats. On September 30th the defendant com- 
 pany commenced an action against the plaintiffs for infringement. 
 The defendants having written another threatening letter to one 
 of the plaintiffs' customers, the plaintiffs applied to North, J., for 
 an interim injunction, but were refused, and given liberty to apply 
 if the infringement action were not prosecuted with due diligence. 
 On April 27t.h, 1888, the plaintiffs in this action offered to stay 
 proceedings until the action for infringement was concluded ; but 
 the defendants refused, and threatened to apply for judgment, and 
 accordingly the plaintiffs set the action down for trial, and the two 
 actions were tried together. Kekewich, J., held that the infringe- 
 ment was proved, and accordingly dismissed the action for threats 
 with costs. The Court of Appeal held that the combined company 
 had not infringed, and reversed the judggaent in the action for 
 threats, and referred it back to Kekewich, J., to deal with the costs. 
 (6 0. B. 367.) The Automatic Company had, prior to the threats 
 in question, instituted and prosecuted an action against another 
 defendant for other infringements : — Held, by Kekewich, J., (1) 
 
Cases sineethe Aot of 1883. 555 
 
 tHat this latter action did not bring the defendants witMn the 
 proviso in section 32, because it was not an action for an infringe- 
 ment of the same character as that which was threatened ; (2) that 
 the solicitors' letters were " threats ;" (3) that there was no impro-' 
 priety in the plaintiffs commencing this action to restrain threats, 
 without first communicating with the defendants' solicitors ; (4) 
 that although this action was properly commenced, yet the action 
 for infringement against the plaintiffs was commenced and prose- 
 cuted with due diligence, and that therefore section 32 ceased to 
 apply ; (5) that it was therefore impossible to make the defendants 
 pay costs, but that, owing to their conduct, they ought not to have 
 them. (6 0. B. 502; 42 Gh. B. 665; 58 L. J. Ch. 709.) [As to 
 staying the payment of costs in the infringement action pending 
 the other action, see 37 W. B. 636; 57 L. J. Gh. 647.] 
 
 (/) Day v. Fostee : Barrett and Elbrs, Limited, v. Day. 
 
 Day being a patentee of an improved bottle, granted an exclu- 
 sive licence to Foster to use part of the invention, called the 
 trigger-opener. Subsequently Foster obtained a licence from 
 Ban-ett and Elers, who were the owners of a later patent for 
 improvements in the opening of internally-stoppered bottles, and 
 claimed to make trigger-openers under this latter licence without 
 paying royalties to Day. Day's solicitors, in December, 1888, 
 wrote to Foster's solicitors, that Barrett and Elers' specification 
 was clearly an infringement of Day's patent, and that, in the action 
 against Foster, claims would be made in respect of this patent. 
 Barrett and Elers, who were assisting Foster, and employing the 
 same solicitors, required Day to withdraw such threats, or to 
 commence an action to make them good. In April, 1889, Day 
 commenced an action against Foster only to restrain infringement, 
 and alleged therein that the trigger-openers of Barrett and Elers' 
 patent did not differ materially from his (Day's) invention. 
 Barrett and Elers asked to be joined as defendants in this action, 
 but were refused, and in August, 1889, commenced an action 
 against Day to restrain threats. Cross summonses to stay pro- 
 ceedings were then taken out by Day in the last, and by Poster in 
 the first action : — Seld, that the letter to Foster's solicitors gave a 
 cause of action, under section 82, to any person aggrieved thereby, 
 but that Day's action was an action for infringement within the 
 proviso ; that it was not necessary that such an action for infringe- 
 ment should be brought after the action for threats, nor that it 
 should be an action in which the validity of the patent could be 
 tried ; that Day's action was brought with due diligence, and that 
 therefore Barrett and Elers had no cause of action : — Held, also, that 
 Barrett and Elers' action was vexatious, and must be stayed ; it 
 being clear that no relief could be granted at the trial. (7 
 0. ii:. 54; 43 Ch.D. 435.) 
 
 {g) CoLLEY V. Haet. [1890] 
 
 The plaintiff asked for an injunction to restrain threats by a 
 circular which the defendant had issued on September 15th, 1888. 
 
556 TIME. 
 
 The writ -was issued on September 22nd. In November, 1888, thd 
 defendant commenced an action for infringement ; but being sub- 
 sequently advised that he would fail, in November, 1889, he 
 discontinued the action, and paid the costs : — Seld, that although 
 it was impossible to fix any rule as to the time within which an 
 action would be commenced with due diligence, according to 
 section 32, yet thett prima facie three months was not too long, and 
 this action was within that period. A defendant, in an action to 
 restrain threats, is entitled to wait until the statement of claim is 
 delivered, in order to see if he can counterclaim for infringement : 
 — Held, further, that as the action had only been abandoned when 
 it was seen that it would probably fail, it had been prosecuted with 
 due diligence, and that therefore the defendant came within the 
 proviso of section 32, and must succeed. (44 Ch. D. 179 ; 
 7 0. B. 101 ; 62 X. T. 424 ; 38 W. B. 501.) 
 
 (A) Law v. Ashwoeth. [1890] 
 
 The plaintiffs in an action to restrain threats alleged that the 
 defendants had by letters and by advertisements in newspapers 
 and otherwise threatened the plaintiif company and other persons 
 with proceedings for infringement. The defendants applied for 
 particulars of the threats alleged before delivering their defence. 
 Held, that the defendants ought to be enabled at the earliest 
 possible moment to stop the advertisements, and that full par- 
 ticulars should be given. (7 0. B. 86.) 
 
 Time, 
 
 for application for international patent, within seven months from foreign, 
 application. Patents Act, 1883, sect. 103, p. 61 
 
 for application by personal representatives of inventor, six months from 
 death, sect. 34 (2), p. 81 
 
 for appeal from comptroller, notice to be filed within fourteen days of 
 decision, Eule 5, p. 380 
 
 but comptroller or law officer may allow further time, Eule 5, p. 380 
 
 for opposition to grant, notice to be given within two months of adver- 
 tisement of acceptance of complete specification, sect. 11, p. 38 
 
 for notice of opposition to amendment, within one month from advertise-' 
 ment, sect. 18 (2), p. 10 
 
 for opponent of grant to file evidence, fourteen days from end of two 
 months, Rule 37, p. 39 
 
 for applicant to file evidence in answer, fourteen days from delivery of 
 list of opponent's evidence, Eule 38, p. 39 
 
 for opponent to file evidence in reply, fourteen days. Rule 38, p. 39 
 
 for patentee's evidence in opposition to petition for compulsory licence, 
 fourteen days, Eule 64, p. 78 
 
 for petitioner for compulsory licence to reply, fourteen days. Rule 65, p. 78 
 
 when Patent Office is open. Patent Rules 7, p. 558 
 
 of notice by comptroller to applicant of hearing upon question of amend- 
 ment, ten days, Eule 11, p. 36 
 
 by law officer of hearing of appeal, seven days, Rule 6, p. 380 
 by comptroller cif hearing on opposition, ten days, Rule 41, p. 39 
 
 for payment of renewal fees. Rules 45 to 48, p. 558 
 
 enlargement of, Patent Eule 49, p. 558 
 
 prescribed by Rules may be enlarged, Rule 51, p. 558. 
 
TIME. 557 
 
 For filing and sealing — 
 for leaving complete specification, witMn nine montlis from application, 
 sect. 8, p. 557 
 may be extended by comptroller for one month, Patents Act, 1885, 
 sect. 3, p. 557 
 for accepting complete specification, twelve months, sect. 9 (4), p. 557 
 may be extended by comptroller for three months. Patents Act, 
 1885, sect. 3, p. 557 
 for sealing patent, fifteen months from application, sect. 12 (3), p. 557 
 may be extended by comptroller for four months. Patents Act, 1885, 
 sect. 3, p. 557 
 computation of, whether exclusive or inclusive, p. 58 {g) 
 extension of when delay due to opposition, p. 558 (/) 
 or to non-delivery of letter, p. 558 (k) 
 not where there has been neglect, p. 59 Qi). 
 Of expiration of Patent — - 
 fourteen years from date. Patents Act, 1883, sect. 17 (1), p. 559 
 or on failure to make payment, sect. 17 (2), p. 559 
 unless enlargement granted by comptroller, sect. 17 (3) and (4), p. 559 
 fourteen years reckoned inclusively of day of date, p. 559 (/) 
 three years reckoued exclusively, p. 559 (i). 
 
 For Filing and Sealing. 
 
 Patbhts Act, 1883, sect. 8. (1) If the applicant does not leave a complete 
 specification with his application, he may leave it at any subsequent time 
 within nine months from the date of application. 
 
 (2) Unless a complete specification is left* within that time the application 
 shall be deemed to be abandoned. 
 
 Sect. 9 (4). Unless a complete specification is accepted within twelve 
 months from the date of application, then (save in the case of an appeal 
 having been lodged against the refusal to accept), the application shall at the 
 expiration of those twelve months, become void. 
 
 Sect. 12 (3). A patent shall be sealed as soon as may be, and not after 
 the expiration of fifteen months from the date of application, except in the 
 cases hereinafter mentioned, that is to say — (a) Where the sealing is delayed 
 by an appeal to the law officer, or by opposition to the grant of the patent, 
 the patent may be sealed at such time as the law officer may direct. 
 (V) If the person making the application dies before the expiration of the 
 fifteen months aforesaid, the patent may be granted to his legal repre- 
 sentative and sealed at any time within twelve months after the death of the 
 applicant. 
 
 Patents Act, 1885, sect 3 (recites these sections, and that it is expedient 
 to empower the comptroller to extend in certain cases the said times and 
 enacts) : A complete specification may be left and accepted within such 
 extended times, not exceeding one month and three months respectively 
 after the said nine and twelve months respectively as the comptroller may 
 on payment of the prescribed fee allow, and where such extension of time has 
 been allowed, a lurther extension i>f four months after the said fifteen months 
 shall be allowed for the sealing of the patent ; and the principal Act shall 
 have efl'eot as if any time so allowed were added to the said periods specified 
 in the principal Act. 
 
 Patents Act, 1883, sect. 98. Whenever the last day fixed by this Act, or 
 by any rule for the time being in force, for leaving any document or paying any 
 fee at the Patent Office shall fall on Christmas Day, Good Friday, or on a 
 
558 TIME. 
 
 Saturday or Sunday, or any day observed as a holiday at the Bank of 
 England, or any day observed as a day of public fast or thanksgiving, herein 
 referred to as excluded days, it shall be lawful to leave such dopument or 
 to pay such fee on the day next following such excluded day, or days if 
 two or more of them occur consecutively. 
 
 ■ Patent Eules, 1890, 7. The Patent OfBce shall be open to the public 
 every week day between the hours of ten and four, except on the days and 
 times followiDg : — Christmas Day. Good Friday. The day oliserved as Her 
 Majesty's birth<iay. The days observed as days of public fast or thanks- 
 giving, or as holidays at the Bank of England. 
 
 45. If a patentee intends at the expiration of the fourth or eighth year 
 from the date of his patent to keep the same in force, he shall, before the 
 expiration of such fourth or eighth year, as the case may be, subject as here- 
 inafter provided, pay the prescribed fee of 501. or 100?., as the case may be. 
 
 46. In the case of patents granted before the commencement of the said 
 Acts, the above Eule shall be read as if the words "seventh year" were 
 therein written instead of the words " eighth year." 
 
 47. If the patentee intends to pay annual fees in heu of the above 
 mentioned fees of oOl. and 1001., he shall, before the expiration of the fourth 
 and each succeeding year during the term of the patent, until and inclusive 
 of the 13th year thereof, pay the prescribed fee. The form J in the second 
 schedule, ^uly stamped, should be used for the purpose of this abd the 
 payment referred to in Eule 45. 
 
 48. On due compliance with these Eules, and as soon as may be after such 
 respective periods as aforesaid, or any enlargement thereof respectively duly 
 granted, the comptroller shall issue a certificate that the prescribed payment 
 has been duly made. • 
 
 49. An application for an enlargement of the time for making a prescribed, 
 payment shall state in detail the circumstances in which the patentee by 
 accident, mistake or inadvertence has failed to make such payment, and 
 the comptroller may require the patentee to substantiate by such proof as 
 he may think necessary the allegations contained in the application for 
 enlargement. 
 
 50. An application for enlargement of time for leaving or accepting a 
 complete specification shall state in detail in what circumstances and upon 
 what grounds such extension is applied for, and the comptroller may require 
 the applicant to substantiate such allegations by such proof as the comp- 
 troller may think necessary. 
 
 51. The time prescribed by these Eules for doing any act, or taking any 
 proceeding thereunder, may lie enlarged by the comptroller if he think fit, 
 and upon such notice to other parties, and proceedings thereon, and upon 
 such terms, as he may direct. 
 
 (J) In re Simpson and Isaacs' Patent. [1853] 
 
 A petition for a patent was lodged on the 2nd October, and the 
 warrant to seal the patent was issued on the 9th of February 
 following. By reason of objections having been filed to the appli- 
 cation, and to the warrant to seal, the patentees were unable to file 
 their specification within six months from the date of the letters 
 patent. Time extended, on petition, to seven months. (21 L. T. 
 Bep. 81.) 
 
 (^) Zm re Haeeis' Patent. [1855] 
 
 Leave was granted to file a specification after the time for that 
 purpose had expired, when the delay had arisen solely from the 
 
TITLE. 559 
 
 non-delivery of the letter containing the proper instruction for 
 filing. (25 L. T. Bep. 90.) 
 
 2Vme of Expiration of Patent. 
 
 Patents Act, 1883, sect. 17. (1.) The term limited in every patent for, 
 the duration thereof shall he fourteen years from its date. 
 
 (2.) But every patent shall, notwitlastanding anythins; therein or in this 
 Act, cease if the patentee fails to make the prescribed payments within the 
 prescribed times. 
 
 (3.) If, nevertheless, in any case, by accident, mistake or inadvertence, 
 a patentee fails to make any prescribed payment within the prescribed time, 
 he may apply to the comptroller for an enlargement of the time for making 
 that payment. 
 
 (4.) Thereupon the comptroller shall, if satisfied that the failure has 
 arisen from any of the above-mentioned causes, on receipt of the prescribed 
 fee for enlargement, not exceeding; ten pounds, enlarge the time accordingly, 
 subject to the following conditions : — 
 
 (a.) The time for making any payment shall not in any case he enlarged 
 
 for more than three months. 
 (b.) If any proceeding shall he taken in respect of an infringement of 
 the patent committed after a failure to make any iiayment within 
 the prescribed time, and before the enlargement thereof, the Court 
 before which the proceeding is proposed to be taken may, if it 
 shall think fit, refuse to award or give any damages in respect 
 of such infringement. * 
 
 (y) EussELL V. Ledsam. [1845] 
 
 Original letters patent were granted on the 26th February, 1825, 
 and renewed letters patent were dated on the 26th February, 1839 : — 
 Held, that the day of the date mnst be reckoned inclusively, and 
 that the former term expired on the 25th February, 1839, and con- 
 sequently the renewed letters patent were granted after the original 
 letters patent had expired. (14 M. & W. 574 ; 14 L. J. Exch. 353.) 
 
 Qc) Williams v. Nash. [1859] 
 
 The day of the date of the letters patent is excluded, and the 
 three years do not expire until twelve o'clock at night of the anni- 
 versary of the day on which the letters patent are granted. (28 
 Beav. 93 ; 28 L. J. Ch. 886.) 
 
 Title, 
 
 Generally — 
 specification must commence with. Patents Act, 1883, sect. 5 (5), p. 560' 
 examiner to report whether it sufBciently indicates subject-matter, 
 
 sect. 6, p. 560 
 if not comptroller may require application, specification or drawings to be 
 
 amended. Patents Acts, 1883, sect. 7 and 1888, sect. 2, p. 560 , 
 
 to be read with specification, pp. 560 (k), 561 («), 566 (c), 567 (/), 568 (I) 
 discloses object of invention, pp. 560 (I), 566 (c) 
 how affected by subsequent discoveries, p. 560 (to). 
 
 Largeness of — 
 ambiguity, pp. 562 (q), 567 (/) (h) „ , ^^ ^ ^ ^^^ 
 vagueness, pp. 563 (s), 564 (v) (w), 567 (/) (g) Qi) 
 
 Variance from specifimtion — • 
 by introducing i^Qproyeijient, p. 566 {d,) 
 
560 TITLE : 
 
 Title Generally, 
 
 Patents Act, 1883, sect. 5 sub-sect. (5). A speoifioation, whether pro- 
 visional or complete, must commence with the title, and in the case of a 
 complete specificatiou must end with a distinct statement of the invention 
 claimed. 
 
 Sect. 6. The comptroller shall refer every application to an examiner, who 
 shall ascei-tain and report to the comptroller whether the nature of the 
 invention has been fairly described, and the application, specification, and 
 drawings (if any) have been prepared in the prescribed manner, and the title 
 sufSciently indicates the subjeot-malter of the invention. 
 
 Sect. 7 amended by Patents Act, 1888, sect. 2. For sect. 7 of the principal 
 Act the following section shall be substituted, namely : — 
 
 " 7. (1.) If the examiner reports that the nature of the invention is not 
 fairly described, or that the application, specification, or drawings 
 has not, or have not, been prepared in the prescribed manner, or 
 that the title does not sufficiently indicate the subject-matter of 
 the invention, the comptroller may refuse to accept the applica- 
 tion, or require that the application, specification, or drawings be 
 amended before he proceeds with the application; and in the 
 latter case the application shall, if the comptroller so directs, 
 bear date as from the time when the requirement is complied 
 with. 
 " (2.) Where the comptroller refuses to accept an application or requires 
 an amendment, the applicant may appeal from his decision to 
 the law oiEcer. 
 "(3.) The law officer shall, if required, hear the applicant and the 
 comptroller, and may make an order determining whether, and 
 subject to what conditions (if any), the application shall be 
 accepted. 
 " (4.) The comptroller shall, when an application has been accepted, give 
 
 notice thereof to the applicant. 
 "(5.) If, after an application for a patent has been made, but before 
 the patent thereon has been sealed, another application for a 
 patent is made, accompanied by a specification bearing the same 
 or a similar title, the comptroller, if he thinks fit, on the 
 request of the second applicant, or of , his legal representative, 
 may, within two months of the grant of a patent on the 
 first application, either decline to proceed with the second 
 application or allow the surrender of the patent, if any, granted 
 thereon." 
 
 (F) HOENBLOWEE V. BOULTON. [1799] 
 
 Grose, J., said : " I consider the patent (title) and specification 
 so connected together as to make a part of each other, and that to 
 learn v^hat the patent is I may read the specification, and consider 
 it as incorporated with the patent." (Dav. P. G. 230.) 
 
 (Z) The Househill Company v. Neilson. N. P. [1843] 
 
 The title of a patent discloses the object of the invention. (1 
 Weh. P. a 678.) 
 
 (m) The Electric Telegraph Company v. Brett. [1851] 
 
 Patent "for improvements in giving signals and sounding 
 alarums in distant places, by means of electric currents transmitted 
 through metallic circuits." Subsequently to the patent, it was 
 
Largeness of Title. 561 
 
 discovered that the return current could be conducted back to tlie 
 battery through the earth as effectually as through a continuous 
 metallic circuit, and this was the method used by the defendants. 
 Cresswell, J., delivering the judgment of the Court, said : " With 
 regard to the use of the words ' metallic circuits ' in the title of the 
 patent, it was urged that the patentees, by using those words, would 
 mislead a person who was in possession of improvements identical 
 with the plaintiff's, but which he intended to use in giving signals by 
 non-metallic circuits, and who might have opposed the grant of a 
 patent of a more comprehensive title, but would acquiesce in one 
 confined to metallic circuits. But it appears to us. that, whatever 
 might be the case, supposing currents transmitted in the manner 
 used by the defendants to have been known at the time of granting 
 the patent, or of giving notice of the application for it, the title did, 
 in the actual circumstances of the case, that is to say, the earth- 
 circuit not being publicly known, give sufBcient notice to any 
 person secretly acquainted with that discovery, or thinking it 
 probable that some such discovery might be made, and having also 
 invented improvements like those of the patentees, to put him on 
 his guard, and on an inquiry how far the proposed patent might 
 interfere with him." (10 Com. B. Bep. 881 ; 20 L. J., C. P. 130 ; 
 15 Jur. 682.) 
 
 (ra) Newton v. Vauchek. [1851] 
 
 The title of a patent, which should be read in conjunction with 
 the specification, may limit a patentee's claim, which would other- 
 wise have voided the patent as being too large. (6 Ex. 866 ; 21 
 L. J., Ex. 308.) 
 
 (»*) HiLiiS V. The London Gas Light Company. [1860] 
 
 The title of a patent was for " an improved mode of manufac- 
 turing gas." The invention consisted in the application of the 
 hydrated oxides of iron in purifying gas from sulphuretted hydro- 
 gen, and in renovating the oxides so used by exposure to the air. 
 The Court held this to be an improved mode of manufacturing 
 gas. (5 E. & N. 370 ; 29 L. J., Ex. 424.) 
 
 (o) Beown's Patent. [1887] 
 
 The title being for "improvements in casks and tubs," the 
 specification described the invention as applicable to tubs and 
 analogous vessels in which the staves were formed with a groove. 
 Held, by the law officers that the title was sufficient. (2 Griff. 1.) 
 
 Largeness of Title. 
 (o*) Eex v. Else. [1785] 
 
 The patent was for a newly invented manufacture of lace, called 
 French^ or wire-ground lace. The specification went generally to 
 the invention of mixing silk and cotton thread upon the frame. It 
 was proved that this was not new. It was contended, in answer, 
 that the former use was inadequate to the purpose of making lace 
 on account of its coarseness, and that the patentee was the first to 
 
 2 
 
562 TITLE: 
 
 succeed in uniting strength and fineness. Buller, J., held tii6 
 patent void, as the claim (expressed in the title) went to the exclu- 
 sive liberty of making lace composed of silk and cotton thread 
 mixed, and not to any particular mode of making it. (1 Web. P. G 
 76 ; Bav. P. 0. 144 ; Bull, N. P. 76.) 
 
 (p) COCHEANE V. Smethuest. [1816] 
 
 A patent was granted for " a method or methods of more com- 
 pletely lighting cities, towns, and villages." The invention de- 
 scribed consisted of improvements in street lamps : — Held, that the 
 patent was void, on the ground of the title being too large. The 
 patent ought to have been taken for an improvement in street 
 lamps. (Bav. P. C. 354 ; 1 Starh, N. P. 205.) 
 
 (g) Campion v. Benton. [1821] 
 
 Where a patent was obtained, for " a new and improved method 
 of making and manufacturing double canvas and sail cloth with 
 hemp and flax, without any starch whatever," and the specification 
 described the invention to consist in an improved texture, or mode 
 of twisting the threads, to be applied to the making of un-starched 
 cloth ; on its being proved that the exclusion of starch had been 
 before adopted : — Held, that such patent was void, as being taken 
 out for more than the patentee had really discovered. Dallas, C.J. : 
 " If there be any ambiguity, either in the patent itself, or in the 
 specification, in any material point, it is of itself a ground for 
 rendering the patent absolutely void." (6 B. Mo. 71 ; SB.&B. 5.) 
 
 (r) Beunton v. Hawkes. [1821] 
 
 A patent was granted for improvements in the construction of 
 ships' anchors, windlasses, and chain cables. It was proved at the 
 trial, that the windlasses and chain cables were new, but that the 
 anchors had been before constructed and used. The patent was held 
 bad for want of a consideration, upon the authority of Hill v. 
 Thompson. Abbott, C.J., said : " The consideration is the entirety 
 of the improvement of the three ; and if it turns out there is no 
 novelty in one of the improvements, the consideration fails in the 
 whole, and the patentee is not entitled to the benefit of that other 
 part of his invention." (4 B. & Aid. 552.) Best, J., based his 
 judgment expressly upon the ground of fraud. He said the patentee 
 had " taken out his patent for more than he is entitled to ; and I 
 am of opinion that that avoids the patent in toto. For the King is 
 deceived ; the patentee is represented to have the merit of inventing 
 two things, whereas he has discovered only one ; and the Crown 
 might have considered the discovery, as to both, a sufficient ground 
 for granting a patent, when it would not have thought so of the 
 discovery of one alone. . . . The united consideration upon which 
 the whole grant was made, is therefore void, and, consequently, 
 the grant itself is void." (jb. 558.) 
 
 (s) Bloxam v. Elsee. [1827] 
 
 Action for the infringement of a patent for " a machine for 
 
Largeness of Title. 563 
 
 making paper in single sheets, witliout seam or joinings, from 
 1 foot to 12 feet and upwards wide, and from 1 foot to 46 feet 
 and upwards in lengtii." It appeared in eyidence, tliat the 
 machine was so constructed as to be capable of producing paper of 
 one definite width only, and that in order to vary the width a 
 new machine was required. It was held by the Court of King's 
 Bench, that the meaning of the patentee's representation was, 
 that paper of various widths might be obtained by one and the 
 same machine ; and, as that representation, which was a material 
 one, was not true, the consideration for the grant had failed, and 
 the patent was void. (6 B. & G. 169 ; 9 Dow. & By. 215.) 
 
 (s) Sturtz v. De la Eue. [1828] 
 
 The patent was " for certain improvements in copper and other 
 plate printing." The specification declared that " the nature of 
 the invention consisted in putting a glazed or enamelled surface 
 on paper, to be used for copper and other plate printing, by means 
 of whitelead and 'size, whereby the finer lines of the engraving are 
 better exhibited than heretofore, and also in a mode of polishing 
 the said enamel, and the impression after it has been drawn from 
 the plate. Lord Lyndhurst, L.C. : " The description in the patent 
 must unquestionably give some idea, and, so far as it goes, a true 
 idea of the alleged invention, though the specification may be 
 brought in aid to explain it. The title in this patent is for 
 ' certain improvements in copper and other plate printing.' 
 Copper-plate printing consists of processes involving a great 
 variety of circumstances ; the paper must be of a particular 
 description : before it is used, it must be damped ; it must remain 
 damp a certain time, and must be placed in a certain temperature ; 
 the plate must be duly prepared, and duly applied, and various 
 processes must be gone through, before the impression is drawn off 
 and brought to a finished state. An improvement in any one of 
 those circumstances, — in the preparation of the paper, for instance, 
 or the damping it, &c. — may truly be called an improvement in 
 copper-plate printing." (6 Buss. 322.) 
 
 («) Felton v. Geeaves. N. P. [1829] 
 
 A patent was granted for " a machine for an expeditious and 
 correct mode of giving a fine edge to knives, razors, scissors, and 
 other cutting instruments." As the machine described in the 
 specification would not do for sharpening scissors, the patent was 
 held void. (3 C. & P. 611.) 
 
 (m) Morgan v. Seaward. [1837] 
 
 The patent was taken out " for certain improvements in steam 
 engines and in machinery for propelling vessels ; which improve- 
 ments are applicable to other purposes." The jury found that the 
 alleged invention was not an improvement in steam engines. 
 Parke, J., delivering the judgment of the Court, said : " Upon the 
 authorities we feel obliged to hold that the patent is void, upon 
 the ground of fraud on the Crown. . . A patent for two or more 
 
 2 2 
 
564 TITLE : 
 
 inventions, when one is not new, is void altogether, as was held in 
 Hill V. Thompson, and Brunton v. HawTceg ; for, although the 
 statute invalidates a patent for want of novelty, and, consequently, 
 by force of the statute, the patent would be void as far as related 
 to that which was old, yet the principle on which the patent has 
 been held to be void altogether, is, that the consideration for the 
 grant is the novelty of all, and the consideration failing, or, in 
 other words, the Crown being deceived in its grant, the patent is 
 void, and no action maintainable upon it." (1 Web. P. C. 196 ; 
 2M.&W. 561 ; Mur. d E. 60 ; 1 Jur. 529.) 
 
 (v) Stead v. Williams. N. P. [1843] 
 
 Action for the infringement of a patent " for mating or 
 paving public streets and highways, and public and private 
 roads, courts and bridges, with timber or wooden blocks." The 
 defendants pleaded, inter alia, " that the title, in its claim, was too 
 large, uncertain, inapplicable, inexplicable, inconsistent, vague and 
 ambiguous, and at variance with the specification." Cresswell, J., 
 referring to this, said : " Whether it is too vague or not is rather 
 a matter of law than anything else, and upon that I also say that 
 I am in favour of the plaintiff. I think that it is not too vague, and 
 therefore I advise you to find that issue for the plaintiff." (2 Web. 
 
 P. a 137.) 
 
 (w) Cook v. Peaege. [1844] 
 
 The patent was taken out "for improvements in carriages," 
 and the invention was an improvement in German shutters, 
 which could only be used in some kinds of carriages : — Held, 
 that, by reason of the title of the invention being too large and 
 general, the patent was void. (8 Q. B. 1050 ; 12 L. J., Q. B. 190 ; 
 7 Jur. 765.) This decision was reversed on appeal. Tiiidal, C.J., 
 delivering the judgment of the Exchequer Chamber, said: "The 
 mere vagueness of the title appears to us to be an objection that 
 may well be taken on the part of the Crown, before it grants the 
 patent, but to afford no ground for avoiding the patent after it has 
 been granted. If such title did not agree with the specification 
 when enrolled, or if there had been any fraud practised on the 
 Crown, in obtaining the patent with such title, the patent in 
 those cases might, undoubtedly, be held void. Any evidence of a 
 design on the part of the inventor to choose a vague and general 
 title, in order that he might avail himself, at the time of the 
 enrolling of the specification, of an invention not discovered by 
 him at the time of taking out the patent, or in order to prevent 
 other subjects of the Queen from availing themselves of a dis- 
 covery made by them, upon the ground of its falling within the 
 range of the general terms of the title, although such invention 
 was different from that for which the patent was really and in 
 truth taken out, might afford such proof of fraud upon the Crown 
 and such injury to the subject, as that the vagueness and 
 generality of the title in such case might avoid the patent. 
 But, in the present case, no such evidence was given, nor was 
 
Variance between Title and Speoifioation. 565 
 
 the existence of fraud suggested ; but the patent has been held 
 void (in the Court below), upon the mere ground of the title being 
 so large as to be capable of comprising a different invention from 
 that which is described in the specification, and from no other 
 cause." (8 Q. B. 1064 : 8 Jur. 500 ; 13 L. J., Q. B. 192.) 
 
 (a;) Crosslet «. Potter. N. P. [1853] 
 
 Pollock, C.B., in summing up to the jury, said : " In the year 
 1842, Mr. Thompson, a weaver and machinist, takes out a 
 patent for an improvement in weaving figured fabrics; and one 
 of the objections of the defendants to the patent, stated in the 
 notice of objections, is, that the patentee has taken out his patent 
 for an invention entitled, ' Improvements in weaving figured 
 fabrics,' and that these improvements are applicable to a certain 
 class of figured fabrics only, namely, those which have a terry 
 surface. That objection, in my opinion, is not well founded. The 
 improvement in a particular portion of figured fabrics may be 
 well called, I think, an improvement in weaving figured fabrics. 
 Though it be not applicable to all, it is an improvement in the 
 general weaving of figured fabrics ; though it may not apply itself 
 to any particular individual case, I think there is nothing wrong 
 in that." {Macr. P. G. 242.) 
 
 (y) Newall v. Elliott. [1864] 
 
 Pollock, C.B., stated that he had, when Attorney-G-eneral, 
 refused an application for a patent for " an improvement in 
 locomotion,'' such a title being too general. (13 W. B. 15 ; 10 Jur., 
 N. S. 955.) 
 
 (?/*) Brown's Patent. [1887] 
 
 The patentee is entitled to frame his title in his own way, pro- 
 vided he does not infringe the rules of the statute. (2 Griff. 1.) 
 
 Variance between Title and Specification. 
 
 («) BaINBRIDGE «. WiGLEY. N. P. [1810] 
 
 Action for the infringement of a patent for improvements on 
 the flageolet. The specification stated that by the improvements 
 the instrument produced notes not before produced on the old 
 instrument. It appeared also in evidence, that the invention was 
 a great improvement, but that only one new note was produced. 
 Ellenborough, C.J., held, that this was fatal to the patent, the 
 consideration on which it was granted not being truly stated. 
 For the patentee had stated that, by his improvements, he had 
 given new notes, when in fact he had given but one new note. 
 {Pari. Bep. Pat. 1829, p. 197; 18 Bep. Arts. 127; 1 Carp. P. G. 
 270.) 
 
 (a) Kex «. Metcalp. Sei.fac. [1817] 
 
 This was a scire facias brought to repeal a patent, obtained by 
 the defendant, for the manufacture of hair brushes, which were 
 
566 TITLE : 
 
 described to be tapering brushes. Tbe specification directed a 
 method of making brushes in which the bristles would be of 
 unequal lengths. Lord EUenborough : " If the word tapering 
 be used in its general sense, the description is defective ; there 
 is no converging to a point. If the term has had a different 
 meaning annexed to it by the usage of trade, it may be received 
 in its perverted sense." No such evidence being given there 
 was a verdict for the Crown. The Court subsequently refused a 
 rule nisi for a new trial. (2 Starh. N. P. 249; 1 Web. P. G. 
 141 (ra).) 
 
 (6) Hill v. Thompson. [1818] 
 
 A patent had been obtained for " the invention of certain im- 
 provements in the smelting and working of iron." The specifi- 
 cation claimed certain improvements by which the iron in slags or 
 cinders could be brought into the state of bar iron; and also the 
 discovery of the employment of lime, to prevent that quality in 
 iron called " cold short." At the trial for an infringement of the 
 patent it was proved that the lime had been used for the above 
 purpose before the date of the patent. And further, that the iron 
 from slags and cinders had been before obtained when those ma- 
 terials were used in various proportions : — Seld, that the patent 
 was void, as the specification claimed, not an improvement upon 
 the previous use of lime, but the discovery of its power of pre- 
 venting cold short ; and " if any part of the alleged discovery, 
 being a material part, fail (the discovery in its entirety forming 
 one entire consideration), the patent is altogether void." (8 Taunt. 
 375 ; 1 Web. P. 0. 239 ; 2 B. Moore, 424.) 
 
 (c) Ees «. Wheeler. Soi. fac. [1819] 
 
 Patent for " a new and improved method of drying and pre- 
 paring malt." The specification described an invention which 
 consisted in submitting malt, prepared by the ordinary process, 
 to a high degree of temperature, and thus producing a colouring 
 material for beer : — Held, that the patent was void, on. the ground 
 (inter alia), that the patent was for a different thing from that 
 described in the specification. Abbott, C.J. : " The language of 
 the patent may be explained and reduced to certainty by the 
 specification ; but the patent must not represent the party to be 
 the inventor of one thing, and the specification show him to be 
 the inventor of another ; because, perhaps, if he had represented 
 himself as the inventor of that other, it might have been well 
 known that the thing was of no use, or was in common use, and 
 he might not have obtained a grant as the inventor of it. . . . 
 It was contended that this process was in truth a preparation of 
 malt to answer a particular purpose, and that the purpose need 
 not be noticed in the grant. It may be true in general that the 
 purpose need not be mentioned in the grant ; but if in any 
 particular case the mention of the purpose be necessary to 
 explain the words previously used, to show that they were not 
 used in th«ir ordinary and obvious sense, but in a sense limited 
 
Variance hetween Title and Specijioation. 567 
 
 and confined to tliat particular purpose ; in sucli a case, we 
 think the purpose ought to he mentioned." (2 B. & Aid. 346.) 
 
 (d) Ceossley v. Beverley. [1829] 
 
 In moving for a nonsuit it was ohjected that the patent was 
 void, as, hetween the date of the patent and the specification, the 
 patentee had invented improvements in the apparatus, which 
 he described in the specification as part of his invention : — Held, 
 that the insertion of these improvements in the specification not 
 only did not render the patent void, but that it was the duty of 
 the patentee to communicate them to the public. (9 B. (6 C. 63 ; 
 1 Web. P. a 112.) 
 
 (e) Fisher v. Dewick. [1838] 
 
 The patent was for improvements in machinery for making 
 bobbin net lace. The invention was for making a spot during 
 a particular part of the process, and was useless where that 
 addition was not wanted. The judge at nisi prius held the title 
 to be sufficient, and the Court of Common Pleas refused a rule 
 nisi lor a new trial, on the ground of misdirection ; Tindal, C.J., 
 observing that it could not, without great refinement, be said, that 
 the invention was not an improvement in the manufacture of 
 bobbin net lace. (Not reported on this point. Cited in the argu- 
 ment in Cooh V. Pearce, 8 Q. B. 1056.) 
 
 (/) Neilson v. Harford. [1841] 
 
 The patent was granted for "an invention for the improved 
 application of air to produce heat in fires, forges, and furnaces, 
 where bellows and other blowing apparatus are required." The 
 invention consisted in passing the air, from the blowing 
 apparatus, into an artificially-heated receptacle, and from thence 
 to the furnace. It was objected, that it was doubtful whether 
 the patent was for the invention of the application of hot air, 
 or only for an improved mode of applying hot air. Abinger, C.B., 
 said : " If the specification is consistent with the title, that 
 would be sufficient." Parke, B., delivering the judgment of 
 the Court, said : " The title of the patent is for ' the improved 
 application of air.' Though that is ambiguous, it is sufficiently 
 explained by the specification, and is not at variance with it, 
 as was the case in Bex v. Wheeler." (8 M. & W. 806; 1 Web. 
 
 P. a 331.) 
 
 {g) Nickels v. Haslam. [1844] 
 
 The plaintiff obtained letters patent for " improvements in the 
 manufacture of plaited fabrics." The specification described that 
 which together amounted to but a single improvement in the 
 mode of manufacture : — Held, upon the authority of Cooh v. Pearce, 
 that this was not such an inconsistency between the title of the 
 patent, and the description in the specification, as to invalidate 
 the patent. (8 Scott, N. B. 97 ; 7 M. d G. 378; 8 Jur. 474; 13 
 L. J., G. P. 146.) 
 
568 TITLE. 
 
 (h) Beard v. Eqerton. [1846] 
 
 The title described the patent to he for " a new or improved 
 method of ohtaining the spontaneous reproduction of all the 
 images received in. the focus of the camera ohscnra." The title 
 was held to he sufficient, on the authority of Neilson v. Sarford, 
 and Nichels v. Haslam. Cresswell, J., said : " If part of the 
 method be new, so as to produce a result that as a whole is new, 
 surely it may be called a new or improved method. If the 
 method be altogether new, may it not be properly called an 
 improved method? They seem to be convertible terms." (3 C. B. 
 97 ; 15 L. J., a P. 270.) 
 
 (i) Ceoll v. Edge. [1850] 
 
 A patent was granted " for certain improvements in the manu- 
 facture of gas for the purpose of illumination, and in the apparatus 
 used when transmitting and measuring gas." In the specification, 
 the words " therein and " were interpolated between " used " and 
 " when." So that the specification was represented to be " for 
 improvements in the manufacture of gas for the purpose of 
 illumination, and in the apparatus used therein and when trans- 
 mitting and measuring gas." The patent was held bad, as the 
 patentees specified for " a more extensive and different patent from 
 that which was granted to them." (9 0. B. 479 ; 14 Jur. 553 ; 19 
 L. J., a p. 261.) 
 
 (j) Eegina «. Mill. [1850] 
 
 The title of the patent was " for improvements in instruments 
 used for writing and marking, and in the construction of ink- 
 stands ; " and the specification, as amended by the disclaimer, 
 described pens and pencils, and improvements in the construction 
 of inkstands : — Seld, that there was no variance. (10 G. B. 379; 
 lL.M.d; P. 695 ; 15 Jur. 59 ; 20 L. J., C. P. 16.) 
 
 (¥) Patent Bottle Envelope Company v. Seymer. [1858] 
 
 A patent was granted for " improvements in the manufacture 
 of cases or envelopes for covering bottles." The specification, 
 after describing the apparatus, in the arrangement of which the 
 invention was stated to consist, claimed the combination of 
 mechanism, and the making of envelopes for bottles as described : 
 — Held, that the specification was for the mode of making, and 
 not for the envelope ; and that it was, therefore, not larger than the 
 grant. (28 L. J., 0. P. 22; 5 C. B., N. S. 164; 5 Jur. N.S. 174.) 
 
 (Z) OXLEY V. HOLDEN. [1860] 
 
 The title was " for certain improvements in the doors and 
 sashes of carriages." The specification stated, that the improve- 
 ments were applicable " in any position where windows and 
 doors are subject to jar and vibration." Erie, C.J., delivering 
 the judgment of the Court, said : " It seems to us reasonable that 
 the claim should be construed with reference to the title, and 
 confined accordingly to the doors and windows of carriages. The 
 present case has no analogy to the decision of this Court in Croll 
 
TEUST. 569 
 
 V. Mge." (8 a B., N. S. 707 ; 30 L. J., 0. P. 74 ; 8 W. B. 627 ; 
 2 L. T. Bep., N. 8. 464.) 
 
 (m) Penn v. Bibby : Pbnn v. Jack. [1866] 
 
 Evidence may be giTen, under an issue as to tlie sufScienoy 
 of the specification, to prove a variance between the complete 
 specification and the title, or provisional specification, (i. B. 
 2 Oh. 130 ; 36 L. J. Ch. 458 ; 15 L. T. Bep., N. S. 401 ; 15 W. B. 
 211.) 
 
 («) Paekes v. Stevens. [1869] 
 
 A patent was entitled for " improvements in the manufacture 
 of railway station and other gas lamps," but the specification 
 claimed only (by reference to a former specification) improve- 
 ments in " that class of lanterns suitable for suspension in railway 
 stations and other public places." Whether the patent was confined 
 to lamps suspended, quaere. (L. B., 8 Eq. 358 ; 38 L. J., Gh. 627.) 
 
 (o) Weight v. Hitchcock. [1870] 
 
 Patent " for the invention of improvements in the manufacture 
 of frills or ruffles, and in the machinery or apparatus employed 
 therein." The provisional specification described the invention, 
 as relating to the manufacture of frills or ruffles, but the complete 
 specification extended the invention to the manufacture of frills, 
 ruffles, or trimmings. Held, that as the words " frills, ruffles, and 
 trimmings," are all ejusdem generis, and as they are only important 
 as showing what it is that is ultimately to be made by the 
 machinery of which alone the plaintiff claims to be the inventor, 
 'the variation is not such as to render the patent invalid. (L. B. 
 5 Ex. 37 ; 39 L. J., Ex. 97.) 
 
 Tools, application of known, to new purpose, pp. 526 (x), 527 (y). 
 
 Trade known not prohibited, p. 492 (y). 
 
 Trade Secrets, disclosure of, hj inspection, pp. 325 (w), 328 (/), 330 («.*) 
 by discovery, pp. 320 (x), (a), 324 (?*) 
 to assessor of Court, p. 65 (c), 95 (c). 
 
 Transmission of Patents to be entered on Eegister, sect. 23, p. 397. 
 
 True and First Inventor. 
 
 the person who discovers a new manufacture, p. 273 (m), 243 (/). 
 
 the importer from abroad of a new manufacture, p. 272 (g), 277 (h). 
 
 person who makes joint application with inventor, p. 206. 
 
 leg&l representative of inventor. Patents Act, 1883, sect. 34, p. 272. 
 
 declaration as to, sect. 5 subs. (2), p. 81. 
 
 patent to, not invalidated by fraudulent application. Patents Act, 1883, 
 sect. 35, p. 569. 
 Patents Act, 1883, sect. 35. A patent granted to the true and first 
 inventor shall not be invalidated by an application in fraud of him, or by 
 provisional protection obtained thereon, or by any use or publication of 
 the invention subsequent to that fraudulent application during the period of 
 provisional protection. 
 
570 TEUSTEE. 
 
 Trust not to be entered on Eegistar. Patents Act, 1883, sect. 85, p. 569. 
 
 Patents Act, 1883, sect. 85. There shall not he entered in any register 
 kept under this Act, or be receivable by the comptroller, any notice of any 
 trust expressed implied or constructive. 
 
 Trustee. 
 
 of foreign inventor may petition for extension, 102 (s). 
 
 of joint stock company may petition for extension, pp. 101 (m), 102 (^) 
 
 of foreigner may obtain patent in England, p. 278 (d). 
 
 Unpatentable invention. See under Subject- Matter, pp. 532 seq. 
 
 Useless part, is not claimed as essential does not invalidate patent, p. 439 (p). 
 
 User, 
 
 between expiry and renewal of patent, no infringement, pp. 154 (j),570(o) 
 prior, relation to infringement, pp. 154 (f), 192 (o), 226 (/), 365 (y) 
 sale of patent articles carries with it right of, unless limited by agrees 
 
 ment, pp. 214 (d), 216 (i) 
 pubhc, not ground of opposition to grant of patent. Patents Act, sect. 11, p. 38 
 prior to date of patent. See under Novelty, pp. 232-242. 
 
 (o) EussELL V. Ledsam. 
 
 User between expiry and renewal of patent is no infringement, 
 (16 M. & W. 641.) ' 
 
 (jp) Unwin v. Heath. 
 
 Proof of a user of an inYontion sucli as before the patent was 
 granted would be evidence tliat tbere was no novelty, if taking 
 place after the patent is evidence of an infringement. (25 L, J., 
 a p. 13.) 
 
 Utility of Invention. 
 
 Qenerally — 
 of improvementconsideredirrespectiveof that of original invention, p.572(J) 
 absence of, makes patent mischievous to state, p. 573 (e) 
 not considered on application for patent, p. 40 Qi) 
 cheapness to be considered, pp. 576 {q), 577 (t*) 
 of invention should extend to its general uses, pp. 576 (j), 578 (a;) 
 obstructing patents, p. 574 (/) 
 an invention not getting into use, a presumption against, pp. 116 Qi), 
 
 117 {k), {n), 118 {p), (r), 128 (m) 
 rebutted by pecuniary embarrassment of patentee, pp. 116 (A), 129 (j) 
 
 nature of invention, pp. 117 (/), 118 (jp) 
 
 market being limited, p. 118 (i) 
 proved by evidence of scientific persons, p. 577 (<) 
 a ground for extension, pp. 116-119 
 sale of patented article, evidence of, p. 117 (€) 
 may be tested without publication, p. 242 (a) 
 jjrobable commercial demand not a correct test of, pp. 575 (m), 577 (w), (»). 
 
 Degree of utility — 
 
 must produce some beneficial results, p. 577 (<) 
 may be very slight indeed, pp. 574 (m), 576 (r) 
 and on any occasion, p. 577 it*). 
 
UTILITY OF INVENTION. 571 
 
 Want of in part of an invention'— 
 
 does not invalidate patent, pp. 578, 579. 
 
 if it is useful on tlie whole, p. 578 (k) 
 
 aliter where use is slight and danger great, p. 579 (a) 
 
 or unnecessary waste is involved, p. 579 (5). 
 Question for the jury — 
 
 whether invention claimed is useful or not, p. 580. 
 
 Utility generally. 
 (g) Darcy v. Allin. [1602] 
 
 _" Where any man hj his own charge and industry, or by his awn 
 ■wit OT invention, doth bring any new trade into the realm, or any 
 engine tending to the furtherance of a trade that never was used 
 before : and that for the good of the realm : that in such cases the 
 King may grant to him a monopoly patent for some reasonable 
 time, until the subjects may learn the same, in consideration of the 
 good that he doth bring by his invention to the commonwealth : 
 otherwise not." (Nay, B. 182.) 
 
 (r) Edgebeeey v. STErHENS. [1691] 
 
 The Act 21 Jac. I. intended to encourage new devices useful to 
 the kingdom. (1 Wei. P. 0. 35 ; Dav. P. 0. 36.) 
 
 (s) Eex «. Aekwbight. Scire facias. [1785] 
 
 When an invention is proved to be new, the question of its 
 materiality or utility arises. {Dav. P. 0. 138 ; 1 Web. P. C. 72.) 
 
 (t) TuENEB V. Winter. [1787] 
 
 Ashurst, J., said : " I think that, as every patent is calculated to 
 give a monopoly to the patentee, it is so far against the principles 
 of law, and would be a reason against it, were it not for the advan- 
 tage which the public derive from the communication of the 
 invention." (Dav. P. G. 161 ; 1 T. B. 605 ; 1 Web. P. G. 80.) 
 
 (tt) BouLTON V. Bull. [1795] 
 
 Eooke, J., in the course of his judgment, said, that the public 
 have a right to receive a meritorious consideration in return for the 
 protection which a patentee claims. (2 R. Bl. 478.) Buller, J., 
 said : " The invention professes to lessen the consumption (of 
 steam), and, to make the patent good, the method must be capable 
 of lessening the consumption to such an extent as to make the 
 invention useful. More precision is not necessary, and absolute 
 precision is not practicable." (lb. 498.) 
 
 (v) HuDDART V. Grimshaw. N. P. [1803] 
 
 EUenborough, C. J., told the jury that if an invention " be pro- 
 ductive of a new end, and beneficial to the public, it is that species 
 of invention which, protected by the King's patent, ought to con- 
 tinue to the person the sole right of vending." (1 Weft. P. G. 86 ; 
 Bav. P. G. 278.) 
 
572 UTILITY : 
 
 (lo) Manton ». Parker. N. P. [1814] 
 
 The patent was for " a hammer, on an improved constniotion, 
 for the locks of all kinds of fowling-pieces and small arms." A 
 material part of the invention consisted in a means of letting out 
 the air from the barrel, and causing a communication between the 
 powder in the pan and in the barrel, without, at the same time, 
 letting out the powder. The witnesses for the defendant having 
 proved that the powder passed through the same hole as the air, 
 Thomson, O.B., held : " That the utility of the invention, and the 
 purpose of the patent, wholly fail ; for the purpose of the hole, as 
 described in the specification, is to let the air pass through, and at 
 the same time secure the powder from passing through ; that of 
 itself would be an answer to the action." {Dav. P. C. 327 ; 1 Web. 
 
 jp. a 192, («).) 
 
 («) Manton v. Manton. N. P. [1815] 
 
 Gibbs, 0. J., held that " in order to support a right to the exclu- 
 sive enjoyment of any invention, it is necessary that the party who 
 takes out the patent should show that the invention is new, that 
 it w.as unknown to the trade and to the world before ; that it is 
 not only new.'but that it is useful to the public." (JDav. P. G. 348.) 
 
 (^) BOVILL «. MOOEE. N.P. [18] 6] 
 
 Action for the infringement of a patent. Gibbs, C.J. : " In 
 point of law it is necessary that the plaintiff should prove that this 
 is a new and useful invention, in order to entitle himself to the 
 present action." {Bav. P. G. 399.) 
 
 (z) Hill v. Thompson. [1817-8] 
 
 A patent can be supported only for an invention which is useful. 
 (3 Mer. 629 ; Web. P. G. 237.) Dallas, J., delivering the judgment 
 of the Court of Common Pleas, said : "If any part of an alleged 
 discovery, being a material part, fail (the discovery in its entirety 
 forming one entire consideration), the patent is altogether void." 
 (8 Taun. 401 ; 2 S. Moore, 457 ; Web. P. G. 249.) 
 
 (a) Lewis v. Marling. [1829] , 
 
 Parke, J., in the course of his judgment, said : " The preroga- 
 tive of the Crown as to granting patents was restrained by the 
 statute 21 Jac. 1, c. 3, s. 6, to cases of grants ' to the true and first 
 inventors of maliufaotures, which others at the time of granting 
 the patent shall not use.' The condition therefore is, that the 
 thing shall be new, not that it shall be useful ; and although the 
 question of its utility has been sometimes left to a jury, I think 
 the condition imposed by the statute has been complied with when 
 it has been proved to be new." {10 B. d; G. 28 ; 4 Gar. d P. 58 ; 
 1 Web. P. G. 497.) 
 
 (b) Lewis v. Davis. N. P. [1829] 
 
 A patent being for an improvement on a former patent, it is not 
 material whether a machine made according to the first patent 
 
Utility generally. 573 
 
 ■would be useful or not, if it be shown that a machine constructed 
 according to the subsequent patent is useful. (3 Car. & P. 504 ; 
 1 Web. P. a 489.) 
 
 (c) MiNTEE «. Wells. N. P. [1834] 
 
 Alderson, B. : " The plaintiff, in order to establish his right, 
 mast show that the invention is new, and that it is useful." 
 (1 Weh.P. a 129.) 
 
 (d) EnssELL^. Cowley. [1835] 
 
 Lyndhurst, C.J. : " The first question is, is this a new and useful 
 invention ?" (1 Web. P. G. 467.) 
 
 (e) MoEGAN V. Seaward. [1837] 
 
 In delivering the judgment of the Court, Parke, B., said : " A 
 grant of a monopoly for an invention which is altogether useless, 
 may well be considered as ' mischievous to the State, to the hurt of 
 trade, or generally incolivenient,' within the meaning of the 
 statute of James I., which requires, as a condition of the grant, 
 that it should not be so, for no addition or improvement of such an 
 invention could be made by anyone during the continuance of the 
 monopoly, without obliging the person making use of it to pur- 
 chase a useless invention ; and on a review of the cases, it may be 
 doubted whether the question of utility is anything more than a 
 compendious mode, introduced in comparatively modern times, of 
 deciding the question, whether the patent be void under the statute 
 of monopolies." (2 M. & W. 562 ; Mm. &H.%1;\ Jur. 529 ; 1 Web. 
 
 P. a 197.) 
 
 (/) Be Cutler's Patent. Ch. [1839] 
 
 This was a petition to the Lord Chancellor, to afSx the great seal 
 to letters patent, obtained by Cutler, against which a caveat had 
 been lodged. It was urged that Cutler's invention was not useful, 
 and that, therefore, the great seal ought not to be affixed to his 
 letters patent. Lord Cottenham, L.C., referring to this objection, 
 said : " It is not very easy sitting here to form any very conclusive 
 opinion as to the usefulness, nor is it very necessary to inquire 
 into that (particularly considering from whom the objection 
 emanates), because if it be so perfectly useless as is represented, it 
 will interfere with no man's rights, and it will be a mere dead 
 letter, which no man would wish to imitate if they had the right." 
 (1 Web. P. a 426.) 
 
 (g) Ckane v. Peice. [1842] 
 
 Tindal, C. J. : " If the invention be new and useful to the 
 public, it is not material whether it be the result of long experi- 
 ments and profound research, or whether by some sudden and 
 lucky thought, or mere accidental discovery." (4 M. & G. 605 ; 
 1 Web. P. a 411.) 
 
574 UTILITY: 
 
 (li) Walton v. Bateman. N. P. [1842] 
 
 Cresswell, J. : " Then, gentlemen, we come to another objection — 
 I really do not know what plea it applies to — that the invention 
 claimed by the patent is not of any public use or benefit. It is 
 supposed that that may be a question under the ' new manufacture.' 
 I entertain great doubts upon that, because a thing may be a new 
 manufacture, and perhaps may not be of any public use or benefit." 
 (1 Web. P. a 623.) 
 
 (i) Pow V. Taunton. [1846] 
 
 Patent for the invention of a nipping lever, for causing the 
 rotation of wheels, shafts, or cylinders, under certain circum- 
 stances. The specification claimed as the invention " the nipping 
 lever, with its tusk and sliding-box, applied to a rimmed wheel, or 
 to a rimmed flange, for the purpose of causing the same to rotate or 
 move together with any shaft, cylinder, or other suitable machinery 
 which may be attached thereto." The nipping lever was not new ; 
 but the application of it by means of the sliding-box was new : 
 — Seld, that it must also appear that the use of a sliding-box was 
 essential to the invention. (9 Jur. 1056.) 
 
 (j) Crossley v. Potter. N. P. [1853] 
 
 Pollock, C.B., in addressing the jury, said : " A patent for an 
 invention which is merely to obstruct every subsequent improve- 
 ment, which is to step in and prevent the exercise of the ingenuity 
 of mankind, and the introduction of other inventions adapted to 
 the particular subject to which the invention may be applicable. . . . 
 a patent, the object of which is, not to benefit the world by its 
 communication, but to obstruct by the very general character of 
 the claims made for conferring peculiar privileges on the patentee ; 
 such a patent as that, in my judgment, cannot be supported." 
 (Macr. P. a 245.) 
 
 (Jc) Simpson v. Hollidat. Ch. [1864] 
 
 It appears to be necessary that a patented invention should 
 be useful, not only at the time the patent is granted, but also 
 during the whole term of the grant. (20 New Lon. Jour., N. S. 
 107, 120.) 
 
 (I) TouNG V. Eosenthal. [1883-4] 
 
 In law, utility means an invention better than the preceding 
 knowledge of the trade as to a particular fabric. It does not mean 
 abstract utility. Thus in the case of improved stays, the question 
 .is not whether stays are useful, but whether, taking stays as they 
 were before, there is anything in the plaintiff's invention which is 
 more useful than the stays people had before. The juiy found 
 that the invention was not useful. (Griff. 249 ; 1 0. B. 29.) 
 
 (m) Philpott v. Hanburt. (1884-5] 
 
 Grove, J. : " It has been decided over and over again that the 
 slightest amount of utility (I will not say an iufinitesimal scintilla, 
 
Utility generally. 575 
 
 but a very sliglit amount of utility), is sufficient to sustain a 
 patent, and tliat for the purpose of utility, as indeed for the 
 purposes of most of the other issues, you must take it by itself." 
 (Oriff. 185 ; 2 0. B. 33 at p. 87.) 
 
 (m) Badische Anilin und Soda Pabeik v. Levinstein. H. L. [1887] 
 
 In a patent " for improvements in colouring matters suitable 
 for dyeing and printing," the specification began, " The invention 
 consists in the production of red and brown colouring matters, 
 which in chemical language may be termed the sulpho-acids of 
 oxyazo naphthaline," and then described four processes. All the 
 processes were, in fact, found to produce sulpho-acids of oxyazo 
 napthaline applicable to dyeing and printing which varied in 
 colour, but within the limits of red and brown. The specifica- 
 tion did not point out what particular shade would be produced 
 by either of the processes, nor did it indicate which would 
 be of the greatest practical utility either from the colour 
 produced being in demand, or from greater economy in the 
 cost of production; but it appeared from the evidence that 
 when once a desired shade had been obtained there would be 
 no practical difficulty in repeating the process with a reasonable 
 certainty of producing the same result. The majority of the 
 Court of Appeal (Bowen and Fry, L.JJ.), lield, that as there 
 was only one shade of red colouring matter which had any 
 commercial value, and as it was impossible to discover without 
 experiment which of the processes was to be used, and how it 
 was to be conducted, in order to produce that shade, the patent 
 was invalid, since either the specification intended to claim the 
 production of the sulpho-acid of oxyazo naphthaline in all its 
 isomeric modifications, in which case it was only an important 
 step towards a useful discovery, but was not in itself useful, or the 
 specification intended to claim the production of the particular 
 isomer which was of commercial value, in which case it did not 
 show without further experiment how to arrive at the desired 
 result. (24 Ch. D. 156 ; 29 Ch. B. 366.) Eeld, by the House of 
 Lords, that the patent was not invalid. That the specification 
 intended to claim the production of all the isomeric forms, that 
 it was not possible to difierentiate the isomeric forms except by a 
 description of the colour produced, and that it was not incumbent 
 on the inventor in such a case to indicate the respective commer- 
 cial advantages of the varying shades. (12 App. 0. 710.) Per 
 Lord Herschell : It is not " a correct test of utility to inquire 
 whether the invented product was at the time of the patent likely 
 to be in commercial demand, or capable of being produced at a 
 cost which would make it a profitable speculation to manufacture 
 it." (16. 710.) 
 
 (o) DEurscHE Nahmasohinen Fabeik v. Ppaff. [1889] 
 
 A largely increased sale of a machine owing to an improvement, 
 is much more cogent evidence of the utility than it is of the novelty 
 of the improvement. (7 0. B. 16.) 
 
576 UTILITY r 
 
 (p) "WiNBY V. Manchester Steam Teamways Company. [1889] 
 
 In a patent for improvements in points and crossings for 
 tramways : — Held, by Bristow, V.-C, that the inyention of a 
 movable bar or point piece, which is actuated by a spring in a 
 vertical instead of a horizontal direction, and is automatic and 
 effective to guide the cars on to the left hand track without any 
 drop, is sufficiently useful to be good subject-matter. (6 0. B. 359 ; 
 7 0. B. 30.) 
 
 Degree of Utility. 
 
 (q) Cornish v. Eeene. N. P. [1835] 
 
 Action for the infringement of a patent for " an improvement 
 or improvements in the making or manufacturing of elastic 
 goods or fabrics, applicable to various useful purposes." Tindal, 
 C.J. : " It is a circumstance in the case that it is found useful for 
 surgical purposes. The patent, however, is not taken out for 
 that purpose, and it would not be sufficient in order to maintain 
 the patent, on the ground of its being an improvement, to show 
 that it was an improvement in surgical cases for bandages only, 
 because the patent is not only confined to that, but they must 
 prove also that it is generally an improvement with respect to 
 the general uses of that fabric or manufacture which was in- 
 tended — that is, with respect to braces, garters, and other articles 
 that are made of it. The evidence on the part of the plaintiffs 
 states that it is cheaper, and cheapness is an improvement, and not 
 to be laid aside and thought nothing of, and you are to consider 
 it among other things ; but that is not the only thing to be con- 
 sidered, because they may have a thing too cheap to be useful, 
 and you must see whether it combines with it the other property 
 of utility which the former fabric, when used for the same 
 purpose, possesses." (1 Web. P. C. 506.) 
 
 (r) MoEOAN V. Seaward. N. P. [1836] 
 
 Action for infringement. Defendants denied the utility of 
 the plaintiffs invention. Alderson, B., directing the jury upon 
 this point, said : " It is not for you to consider to what extent 
 the thing is useful. If it is a useful invention, then it is a 
 subject to be protected by patent; and if, on the other hand, 
 it is of no use, "then it is no subject to be protected by patent. 
 The issue is, whether it is of any use at all." (1 Weh. P. 0. 
 172.) 
 
 (s) LosH V. Hague. N. P. [1838] 
 
 Action for the infringement of a patent for " certain improve- 
 ments in the construction of wheels for carriages to be used on 
 railways.'' Plea, inter alia, " that the said supposed improve- 
 ments, &c. . . . are only trifling and insignificant alterations 
 in the mode of making wheels before then known and in public 
 use, and are not legal subjects for the grant of the said letters 
 patent." Abinger, G.B., in directing the jury, said : " I observe 
 
Begree of Utility. 577 
 
 one of the pleas states, that the improvements are something 
 trifling and insignificant. If that is the improvement, you will 
 consider whether it is worth a patent or not." (1 Weh. P. G. 
 202.) ■ 
 
 (<) Neilson v. Haefoed. N. P. [1841] 
 
 An invention to support a patent must be productive prac- 
 tically of some beneficial result, no matter how great, provided 
 it is suEBcient to make it worth while (the expense being taken 
 into consideration) to adopt it. (1 Web. P. C. 314.) It is not 
 iiecessary that each part should have been actually tried and 
 proved to answer ; the evidence Of scientific persons that it would 
 answer may be sufScient. (Ifc. 316.) 
 
 (t*) Tetley v. Easton. N. P. [1852] 
 
 When a machine can do that which, apparently, no other 
 machine can be got to do, it must be pronounced useful, even 
 though its cost is very .considerable. It is not necessary that a 
 patent should be so useful as to exclude everything else; it 
 is quite sufficient if on any occasion it is useful. (Macr. 
 
 P. a 63.) 
 
 (u) HiNKS V. Safety Lighting Company. M. E. [1876] 
 
 The legal meaning of the "term " useful " is very slight utility 
 indeed. (4 Gh. D. 616.) 
 
 (v) Laweence v. Peery. [1883] 
 
 North, J. : " Under these circumstances I have felt some diffi- 
 culty in seeing how the plaintiffs invention can be useful when it 
 only differs from an earlier one by an ingredient which does 
 neither harm nor good." (Griff. 143 ; 2 0. B. 180 at p. 184.) 
 
 (w) United Telephone Company v. Bassano. [1886] 
 
 The defendants objected that the telephone in question, and 
 especially the tension regulator portion thereof, was not com- 
 mercially useful, and had never been in actual use : — Held, that it 
 did not necessarily follow that the patent was bad, for even the 
 most original and valuable inventions might be immediately 
 superseded by simpler constructions involving the same principle. 
 (3 O. B. 295.) 
 
 (a;) SiDDELL V. ViciiEES. C. A. [1888] 
 
 Kekewich, J., following Badische Anilin v. Levinstein, Jield, that it 
 was no answer to the plaintiff to say that two of his processes were 
 not immediately likely to be commercial successes, and on the 
 evidence held, that the invention was useful. (5 0. B. 81.) The 
 Couit of Appeal refused to disturb the finding as being not 
 incorrect, and as being a finding of fact. (5 0. B. 430.) 
 
 2 p 
 
578 UTILITY : 
 
 Want of Utility in a Part of Invention. 
 (w) Lkwis v. Marling. [1829] 
 
 Wliere a patentee of an improved machitje claimed as his inven- 
 tion a part of it whicli turned out to be useless, it was lield that this 
 did not vitiate the patent, the specification not describing it as 
 essential to the machine. Baylej', J., said : " If the party knew 
 that it (the useless part of the machine) was unnecessary, the 
 patent would be bad on the ground that this was a deception ; but 
 if he thought that it was proper, and only by a subsequent dis- 
 covery finds out that it is not necessary, I think that it forms no 
 ground of objection." (1 Weh. P. G. 496.) 
 
 (a;) Haworth v. Haedcastle. [1834] 
 
 In an action for the infringement of a patent the jury found as 
 follows : " The invention is new and useful upon the whole, . . . 
 they also find that the machine is not useful in some cases for 
 taking off goods." Verdict for the plaintiff. The Court subse- 
 quently refused to make absolute a rule nisi for a nonsuit, on the 
 ground that the jury had, by their special finding, negatived the 
 usefulness of the invention to the full extent of what the patent 
 and specification had held out to the public. Tindal, C.J., de- 
 livering the judgment of the Court, said: "The jury find 'the 
 invention is new and useful upon the whole ; . . . but they also find 
 that the machine is not useful in some cases for taking ofi' goods.' 
 . . . But we think we are not warranted in drawing so strict a 
 conclusion from this finding of the jury, as to hold that they 
 have intended to negative, or that they have thereby negatived, 
 that the machine was useful in the genera;lity of the cases which 
 occur for that purpose. After stating that the machine was useful 
 on the whole, the expression, that ' in some cases it is not useful to 
 take up the cloths,' appears to us to lead rather to the inference 
 that in the generality of cases it is found useful. And if the jury 
 think it useful in the general, because some cases occur in which it 
 does not answer, we think it would be much too strong a conclu- 
 sion to hold the patent void. . . . We think that we should act 
 with, great hazard and precipitation if we were to hold that the 
 plaintiff ought to be nonsuited, upon the ground that his machine 
 was altogether useless for one of the purposes described in his 
 specification." (1 Web. P. 0. 483 ; 4 Jf. <fe Sc. 732 ; 1 Bing. N. G. 189.) 
 
 (y) Morgan v. Seaward. [1837] 
 
 Alderson, B. . " We do not mean to intimate any doubt as to the 
 validity of a patent for an entire machine or subject which is, 
 taken altogether, useful, though a part or parts may be useless,' 
 always supposing that such patent contains no false suggestion." 
 (1 Web. P. G. 197.) 
 
 (z) Freakson v. Loe. M. K. [1878] 
 
 " It is not because a patentee has attempted to claim as an 
 advantage something else to which he is not entitled, that the 
 improvement he has made is to be held not worthy of a patent. I 
 
Want of Utility in a Part of Invention, 579 
 
 am not to say that, because even half of the advantages said to 
 arise from his inventicm may not be new, he is not to be protected 
 in respect of the other half." Per Jessel, M.E. (9 Gh. D. 64.) 
 
 (z) Bailey ». EoBEETOX. H. L. [1878] 
 
 Patent for " improvements in preserving organic substances." 
 The patentee (Eattray), in his specification, described his invention 
 to consist of " the use of the alkaline and earthy sulphites." Lord 
 Blackburn : The patentee says, " he will take any sulphite, and 
 that, as it is pointed out in the evidence, is a matter which would 
 prevent the operation of his patent from being beneficial. It is 
 well known that some of the earthy Sulphites in a dry form are 
 rank poison, and that would be a very serious objection indeed to 
 their use for the preservation of meat — ^others while not poisonous 
 are objectionable. We know that the alkaline sulphite of soda, for 
 instance, turns into Glauber salts, the sulphite of magnesia turns 
 into Epsom salts, and we know what the effect of that upon the 
 human body would be, and sulphite of lime turns into plaster of 
 Paris. These are all objections which may be very strong ones 
 against Eattray's specification." (3 App. Gas. 1078.) 
 
 (a) Easteebeook v. Great Westeen Eailway Company. [1885] 
 
 In an action for infringement of a patent for improvements in 
 signalling apparatus for railways, it was shown that it was 
 possible without straining to lower simultaneously the signals 
 protecting the main up, the main down, and the branch line. The 
 patent was held bad on the ground of want of utility. Wills, J. : 
 " The specification here points to its universal application for 
 railw^ay signalling, including its use at the most complicated 
 junctions and sidings. If it be useful for one very small and 
 insignificant section of its proposed work, and for the rest is, as in 
 my opinion it is proved to be, fraught with danger and death, the 
 specification is bad, as not distinguishing between its useful and 
 its useless applications. It is as consonant with good sense as I 
 believe it to be with good law, that an inventor who invites the 
 indiscriminate use of apparatus sure to bring about disaster in the 
 long run if generally applied according to his invitation, cannot 
 maintain a patent for his invention because it will do some use- 
 ful work at places and under circumstances where mechanical 
 appliances for preventing conflict of signals are scarcely necessary 
 at all, while elsewhere it is full of danger to the public." {Griff. 
 85; 2 O. B. 201 at p. 210; 3 0. B. 94.) 
 
 (6) United Hoeseshoe and Nail Company v. Swedish Hoesenail 
 Company. [1888] 
 The invention claimed in the plaintifis' sixth claim, consisted 
 exclusively in making the nail blanks cut from one edge of the 
 plate wider at or near the head than those cut from the other edge 
 of the plate : — Held, that as this could not be done without 
 unnecessary waste, the invention was of no utility, and that 
 therefore the whole patent was invalid. (6 0. B. 1.) 
 
580 UTILITY. 
 
 (c) Ehelich v. Ihlee. C. A. [1888] 
 
 Wliere there is general utility in an invention, it is necessary 
 to show very little utility in order to support a second claim which 
 is only subsidiary, (5 0. B. 437.) ; 
 
 Question for the Jury, 
 {d) Hill v. Thompson, [1817] 
 
 The utility of an invention is a question for the jury. (3 Mer. 
 630 ; Web. P. G. 237.) 
 
 (e) Bloxam v. Elsee. N. P. [1825] 
 
 Abbott, C.J., left it to the jury to say whether the invention was 
 useful, (t 0. dt P. 566.) 
 
 (/) Cornish v. Keene. N. P. [1835] 
 
 The evidence respecting the utility of a patented article being 
 conflicting, and the article itself being produced, it is for the jury 
 to use their own judgment of the matter, and determine whether 
 it is useful or not. (1 Wet. P. ft 506.) 
 
 (g) Macnamaea v. Hulse. N. P. [1842] 
 
 Where, in an action for infringing a patent for blocks for 
 pavement, the plaintiff claimed as his invention that his blocks 
 were bevelled both inwards and outwards on the same side, but 
 the specification did not state at what angle the bevels should be 
 jnade ; and one witness stated that the angle was material, but 
 another witness stated that any angle would be of some benefit. 
 Lord Abinger, C.J., said : " It will be for the jury to say whether 
 any particular angle is essential, or whether any angle whatever 
 is useful and beneficial." (Oar. & M. 471.) 
 
 Validity of Patent, 
 
 effect of, on petition for extension, pp. 130-132 
 considered on motion for interim injunction, pp. 334.-345 
 matters affecting to be entered on register, p. 397 
 considered in action to restrain threats, p. 552 (y). 
 
 Variance, 
 
 between title and specification, pp. 565-569 
 
 between provisional and complete specification, pp. 414-421. 
 
 Variations in Rules. 
 
 Patents Act, 1883, sect. 101. (1) The Board of Trade may from time 
 to time make such general rules and do such things as they think expedient, 
 subject to the provisions of this Act — 
 
 (c) For making or requiring duplicates of specifications, amendment, 
 
 drawings, and other documents ; 
 
 (d) For securing and regulating the publishing and selling of copies, at 
 such prices and in such manner, as the Board of Trade think fit, of 
 specifications drawings amendments and other documents; 
 
 (e) For securing and regulating the making printing publishing and 
 
 selling of indexes to, and abridgments of, specifications and other 
 
WOEKMAN. 581 
 
 documents in the Patent Office ; and providing for the inspection of 
 
 indexes and abridgments and other documents ; 
 (/) For regulating (with the approval of the Treasury) the presentation 
 
 of copies of Patent Office publications to patentees and to public 
 
 authorities, bodies, and institutions at home and abroad ; 
 {g) Generally for regulating the business of the Patent Office, and all 
 
 things by this Act placed under the direction or control of the 
 
 comptroller, or of the Board of Trade. 
 
 (2) Any of the forms in the first schedule to this Act may be altered or 
 amended by rules made by the Board as aforesaid. 
 
 (3) General rules may be made under this section at any time after the 
 passing of this Act, but not so as to take effect before the commencement of 
 this Act, and shall (subject as hereinafter mentioned) be of the same elieot as 
 if they were contained in this Act, and shall be judicially noticed. 
 
 (4) Any rules made in pursuance of this section shall be laid before both 
 Houses of Parliament, if Parliament be in session at the time of making 
 thereof, or, if not, then as soon as practicable after the beginning of the then 
 next session of Parliament, and they shall also be advertised twice in the 
 official journal to be issued by the comptroller. 
 
 (5) If either House of Parliament, within the next forty days after any 
 rules have been so laid before such House, resolve that such rules or any of 
 them ought to be annulled, the same shall" after the date of such resolution 
 be of no effect, without prejudice to the vahdity of anything done in the 
 meantime under such rules or rule or to the making of any new rules or 
 rule. 
 
 Sect. 115. All general rules made by the Lord Chancellor or by any other 
 authority under any enactment repealed by this Act, and in force at the 
 commencement of this Act, may at any time after the passing of this Act be 
 repealed altered or amended by the Board of Trade, as if they had been made 
 by the Board under this Act, but so that no such repeal alteration or amend- 
 ment shall take effect before the commencement of this Act ; and, subject as 
 aforesaid, such general rules shall, so far as thpy are consistent with and are 
 not superseded by this Act, continue in force, as if they had been made by the 
 Board of Trade under this Act. 
 
 Vending, 
 
 patented article. See under Infringement, pp. 163-171. 
 
 Venue, 
 
 motion to change, refused, p. 353 {j) 
 affidavit in support of, p. 353 (*') 
 changed to assizes, p. 353 (T) (m) 
 
 of petition for revocation, pp. 353 (m), 403 (i) 
 of infringement by posting from Scotland to England, p. 353 (k). 
 
 Verbal errors in specification, p. 430 (t). 
 
 Waiver of forfeiture by acceptance of licence rent, p. 213 (y). 
 
 War, munitions of, Patents Act, 1883, sect. 44, pp. 406, 407. 
 
 Words, 
 
 in specification to be construed according to their ordinary meaning, 
 
 p. 473 (z) 
 and read as by a person of ordinary understanding, p. 466 (a). 
 
 Workman is not liable for infringement committed by order of master, 
 p. 165 (u). 
 
CASES CLASSED ACCOEDING TO THEIR SUBJECT- 
 MATTER. 
 
 The following Table is given to facilitate the finding of a case of which the 
 name is forgotten, while the nature of the invention is known. The classes 
 are those under which the abridgments of Specifications are grouped by the 
 Patent Oflice, and the numbers and letters following each class indicate 
 some cases in which inventions belonging to that class have been before 
 the Courts. 
 
 Acids, alkalies, oxides and salts 
 
 Agriculture r — 
 
 I. Field implements 
 
 II. Barn and farmyard implements .. 
 Air engines and other motive power engines 
 
 Anchors 
 
 Artist's instruments and materials .. 
 Bleaching, dyeing and printing fabrics .. 
 
 Books, portfolios, card-cases, &c 
 
 Brewing, wine making and distilling 
 
 alcoholic liquids 
 Bricks and tiles 
 
 Bridges, viaducts and aqueducts 
 Carriages and other v^icles for common 
 roads 
 
 Casks and barrels 
 
 Chains, chain cables, &c 
 
 Cooking, bread-making and confectionery 
 Cork, preparation of, bottling liquids, &c. 
 
 Drains and sewers, including the manu- 
 facture of drain tiles and pipes 
 
 Dressing and finishing woven fabrics, and 
 manufacturing felted fabrics 
 
 Electricity and magnetism : — 
 
 I. Generation of 
 
 II. Conducting and insulating .. 
 III. Transmitting and receiving sig- 
 nals, controlling mechanical 
 action and exhibiting electrical 
 
 and 
 
 458(e); 496 (I); 
 552 iy) 
 
 517 (0; 542(d); 
 
 IV. Electric lighting, igniting 
 heating 
 
 176 (s); 506 (o) 
 214(e)'; 509 («) 
 68 (n); 199 (gr); 524 (s); 547 (h); 
 
 567 (/) 
 123 (r); 148 (jj); 522 (n) 
 436 (i); 439 (n); 444 (A) 
 53 (d); 136 (u); 154 (o); 242 (c) ; 
 
 313 (»); 320 (a); 443 (e); 575 
 
 (»); 518(t;); 525 (a) 
 123 (m) 
 241 (a;); 423 («) 
 
 46 (m); 49 (K); 109 (e); 183 (Z); 
 
 352 (/) 
 525 (») 
 303 (j ) ; 403 Qi) ; 459 (i) ; 469 (m) ; 
 
 512 (c); 539(^0; 553(2); 564 (w) 
 37(c); 45(9) 
 
 49 (/); 223 (6); 306 («); 531 (e) 
 126 (a>); 444 (/I) 
 160(d); 196(a); 238(g); 526 (a); 
 
 549 (p); 555 (/) 
 21 (d); 118 (s); 241 (,y) (6); 515 
 
 (») 
 70 (®); 439 (p); 459 (ft); 463(6); 
 464 (w); 470 (s) (t): 487 (g); 
 501 (5); 514 (g); 527 (y); 531 
 (g); 539(«); 576(g) 
 
 63 (»); 271 (/): 420 0'): 553 (a) 
 192 (p); 295 (i/); 411 («) ; 466 (6) 
 95(6); 162 (i); 170 (z); 182 (i); 
 
 199 (/); 292 (») (p); 298 («); 
 
 349 (0; 382 (0 (j); 411 (»); 
 
 417(c); 466(6); 479(&); 549(g) 
 52 (s); 315 (d); 404 0'): 435(/); 
 
 444 (g) ; 532 (ft) 
 
Cases Glassed according to Subject- Matter. 
 
 583 
 
 Electricity and magnetism (contd.) : — 
 V. Electro depoBition and electrolysis 
 VI. Electric motive power engines and 
 similar apparatus 
 Farriery, including medical and surgical 
 
 treatment of animals 
 Fire-arms and other weapons, ammuni- 
 tioa and accoutrements 
 
 Fire engines, extinguishers, escapes, &o. 
 
 Food, preservation of 
 
 Fuel, preparation and combustion of 
 
 Furniture and upholstery 
 
 Gas, production and applications of .. 
 
 Grinding grain and dressing flour and 
 meal 
 
 Harbours, docks, canals, &c 
 
 Hinges, hinge joints, and door springs 
 Hydraulics 
 
 lee-maMng machines, ice safes, and ice 
 
 houses 
 Indiarubber and guttapercha, preparation 
 
 of 
 Instruments, philosophical, nautical and 
 
 meteorological 
 Iron and steel, manufacture of 
 
 Lace-making, knitting, netting, braiding 
 and plaiting 
 
 Lamps, candlesticks, and other illuminating 
 
 apparatus 
 Locks, latches, bolts and similar fastenings 
 Locomotion, aids to 
 
 Manure 
 
 Marine propulsion 
 
 Masts, sails, rigging, &c 
 
 Medicine, surgery and dentistry 
 
 Metals and alloys 
 
 Mining, quarrying, tunnelling and well- 
 sinking 
 
 Music and musical instruments 
 
 Nails, rivets, bolts, screws, nuts and washers 
 
 Needles and pins 
 
 Oilcloth, oilHkin and other waterproof 
 
 fabrics, and artificial leather 
 Oils, fats, lubricants, candles, and soaps . . 
 
 Paints, colours and varnishes 
 
 Puper, pasteboard and papier maclie 
 Photography 
 
 329 (J) 
 
 291 (m); 306(a) 
 
 451 (fc) 
 
 59 (i); 117(»): 138 (d); 169 (v); 
 
 184 (p); 196(w); 198(a); 216(/); 
 
 297 (/) ; 332 (v) ; 432 (6) ; 449 (d) ; 
 
 460 (ft); 572(M;)(a;) 
 46 (m); 522(?),- 539 (m) 
 111 (A;); 403(/); 415(6) 
 7 0'); 14 (o); 129 (o); 174 (»); 
 
 185(a!); 218 (y); 224((J); 445(7,;); 
 
 495 (A) 
 44 (c); 246 (s); 326 (6); 453 (1); 
 
 456(tt); 494(e); 509(3!); S38(»); 
 
 548 (o) 
 53 (a); 89(g); 121 (/i); 159 (a); 
 
 200 (0 (jy, 258 («); 312 (g); 
 
 424 (a) ; 457 (6) ; 469 (Q ; 533 (k) ; 
 
 538 Oo); 568(0 
 177 (y) (w); 191 (fe); 251 (d); 
 
 264(&); 476(d); 503(3) 
 116 (3); 237 (p); 412 (o) ; 525 (?)) 
 537 (g) 
 127 (3) ; 171 (6) ; 173 (i) ; 179 (c) ; 
 
 182 0'); 1-89(0; 550 (r) 
 323 («) 
 
 52 (m); 188 (ft); 207 0'); 333(2'); 
 
 494(/); 509 (to); 522 (m) 
 201 (p); 272 (fc); 445(0 
 
 8(m); 88 (a!) ; 189 (j); 237 (o); 
 
 372 (c); 496 (?); 502 (e); 566(6) 
 50(0; 198(6); 299 (o); 415 (a); 
 
 429 (2) ; 447 (p); 454 (o) ; 459 (3) ; 
 
 512(6); 538 (0(«); 567(e) 
 128(0; 418(d); 431 (y); 537(g); 
 
 548(?i); 554(c); 562 (p) 
 200(4'); 235 (^•); 308(d) 
 217 (0); 218(g); 240 («); 292 (r) 
 
 50 (m) ; 323 (0) 
 89 (K); 130 ()■'); 163(«); 531 (/) 
 55 U): 157 (a); 414 (y); 563 («) 
 113 (a;); 342 (i) ; 467(/); 562(g) 
 436(3); 438 (m) 
 18 (w); 114(d); 137 (jf); 172(e); 
 
 222 (w) 
 17 (0; 42 (i>); 49 (3); 72(6); 156 
 
 (s); 162 (A); 209 (p); 441 («); 
 
 432 (5) 
 521 (0 ; 532 (7i') ; 534 (m) ; 565 (z) 
 240 (0 ; 376 (r) ; 521 (3) ; 579 (6) 
 100 (d) 
 419 (3) ; 70 (d) ; 522 (m) 
 
 69 (r); 132(d); 257 (»); 349 (to) ; 
 
 365 (a); 402(e); 420 (A') 
 477 (e) ; 436 (0 
 
 53(6); 112(0; 439 (0); 455 (s) 
 295 (2) ; 465 (s) 
 
584 
 
 Cases Classed according to Subject-Matter. 
 
 Pipes and tubes, metallic 
 
 Plating or coating metala with metals 
 Pottery . . . . . . . . 
 
 Printing, typographic 
 
 Kailway carriages and other vehicles 
 
 Bail way signals and communicating 
 apparatus 
 
 Bailways 
 
 Raising, lowering, and weighing 
 
 Boads and ways 
 
 Saddlery, harness, stable fittings, &c. 
 
 Safes, strong rooms, tills, &c 
 
 Sewing and embroidering 
 
 Ships building, repairing, sheathing, 
 
 launching, &c. 
 
 Skins, hides and leather 
 
 Spinning, including the preparation of 
 
 fibrous materials and doubling of yams 
 
 and threads 
 
 Starch, gum, size, glue, and other stiffen- 
 ing and adhesive materials 
 Steam engines 
 
 Steering and manceuvring vessels . . 
 Sugar 
 
 Toys, games and exercises 
 
 Umbrellas, parasols and walking sticks . . 
 Watches, clocks and other time-pieces 
 
 Water-purifying 
 
 Water-closets, earth-closets, urinals, &o. . . 
 Wearing apparel : — 
 
 1. Head coverings 
 
 2. Body 
 
 3. Foot 
 
 4. Dress-fastenings and jewellery 
 
 Weaving 
 
 Writing instruments and materials . . 
 
 213 (2); 461 (m); 524 (t); 539 (w) 
 
 25(«); 174 (7«); 194 (s) 
 
 49 {d) ; 156 (g) ; 264 (m) ; 464 (y) ; 
 
 499 («) 
 123 (n); 327(c); 442(c); 445 0') 
 21 (c) ; 114 (c) ; 137 (w) ; 173 (/); 
 
 848 (») ; 452 (i) ; 485 (a) ; 521 (e) ; 
 
 576 (s) 
 179 (6); 243 Qi); 321 (3); 579 (o) 
 
 448 (u); 534 (m); 576 (p) 
 
 51 (r) («); 200 (to); 201 (») (0); 
 
 554 (e) 
 428 (70 ; 499 (s) ; 508 (f) ; 564 (v) 
 451 (ft) 
 
 200 (&■) 
 
 261 (c) ; 311 (m>) ; 320 (») ; 328 (e) ; 
 
 343(g); 415(2); 458(c) 
 322 (i); 428(0; 472 (?;) 
 
 318 (0; 344 (x); 348 (»-); 514 (t) 
 
 18 (w); 45(/'); 177 (a;); 184(g) 
 
 213(a); 418(/); 454(»); 458(d) 
 
 462 (g) ; 482 (g) ; 504 (i) ; 608 (s) 
 
 582 O); 5380'); 567(g) 
 
 533 (i) 
 
 12 (s);" 28 Qt); 182 (ft); 183 (W) ; 
 421 (n) ; 445 (0 ; 457 (y) ; 498 (0) ; 
 506 (p); 520(a) 
 
 201 (i)) ; 234 (») 
 
 121 (/) ; 171 (a) ; 225 (/) ; 424 (2) ; 
 
 453 (ft) 
 193 (g); 231 (d); 521 (ft); 522 (A;) 
 241(a); 871(m); 504(7) 
 149(1)); 50(7) 
 127(c); 197(3!); 306 («;) 
 228 (m); 305 (p); 833 (2) 
 
 242(6); 273 (ft); 530 (e) (d) 
 182(/); 200(7); 463 (w); 480 (p); 
 
 510 (Jb) ; 521 (/'); 528 (a); 574 (7) 
 21(c); 522 (j) 
 52(»); 501(c); 468 («) 
 44 id) ; 230 (6) ; 567 (g) 
 20 (y) ; 174 (m)'; 219 (s) ; 258 (j>) ; 
 
 295 (ic); 568 (/) 
 
 LONDON ; PBIMTED BT WILLtAM CLOWES AND SONS, LUIITED 
 aXAMFOIU) STKEJSrr AND CUAJRINO CROSS. 
 
>S«1»«^