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 THE LAW AND PRACTICE RELATING TO 
 
 LETTERS PATENT FOR 
 
 INVENTIONS. 
 
THE 
 
 LAW AND PRACTICE 
 
 RELATING TO 
 
 LETTERS PATENT FOR INVENTIONS. 
 
 TOGETHER WITH NOTICES OF THE PATENT LAWS IN 
 
 FORCE IN THE PRINCIPAL FOREIGN STATES 
 
 AND IN THE COLONIES. 
 
 WITH AN APPENDIX CONTAINING THE STATUTES, 
 
 RULES, ETC. 
 
 BY WILLIAM FISCHER AGNEW, 
 
 OF LINCOLN'S INN, BAKKISTER-AT-LAW. 
 
 LONDON: 
 
 WILDT AND SONS, LINCOLN'S INN ARCHWAY, W.C. 
 
 Hatt) 33oa6eeUer0 ana ]S>v.biief)ei0t 
 
 MEEEDITH AND EAY, KING STREET, MANCHESTER ; 
 BELL AND BEADEUTEj EDINBURGH j HODGES, FOSTER, AND CO., DUBLIN. 
 
 1874. 
 
CHISWICK PRESS : — PRINTED BY WHITTINGHAM AND WILKINS, 
 TOOKS COURT, CHANCERY LANE. 
 
TABLE OF CONTENTS. 
 
 CHAPTER I. PACE 
 
 Of the Grant of Letters Patent ...... 1 
 
 CHAPTER n. 
 Of the Persons to whom Letters Patent may be granted . 5 
 
 CHAPTER in. 
 Of the Subject Matter of Letters Patent . . . 11 
 
 CHAPTER IV. 
 Of the Specification ........ 77 
 
 CHAPTER V. 
 Of Disclaimers ....•••■ 131 
 
 CHAPTER VL 
 Of the Method of Obtaining Letters Patent , 
 
 . 141 
 
 CHAPTER VII. 
 Of the Oflace of the Commissioners 170 
 
 CHAPTER Vin. 
 Of Extension of the Term of Letters Patent 
 
 . 175 
 
 CHAPTER IX. 
 Of Confirmation of the Term of Letters Patent . . .220 
 
IV TABLE 01' CONTENTS. 
 
 CHAPTER X. PAOE 
 
 Of Assignments and Licences ...... 227 
 
 CHAPTER XI. 
 Of Registration 240 
 
 CHAPTER XII. 
 Of Infringement ........ 243 
 
 CHAPTER XIII. 
 Of an Action for Infringement ...... 285 
 
 CHAPTER XIV. 
 Of a Suit in Equity 303 
 
 CHAPTER XV. 
 Of Pz'oceedings to Repeal Letters Patent .... 340 
 
 Appendix ........ 345 
 
STATUTES. 
 
 21 Jac. I. c. 3 . 
 
 5 & 6 Wm. IV. c. 83 . 
 2 & 3 Vict. c. 67 . 
 7 & 8 Vict. c. 69 . 
 
 15 & 16 Vict. c. 83 
 
 Forms under Act : — 
 Petition . 
 Declaration 
 
 Provisional Specification 
 Reference 
 Warrant . 
 Letters Patent . 
 Specification 
 
 16 Vict. c. 5 
 
 16 & 17 Vict. c. 115 
 
 22 Vict. c. 13 . 
 33 & 34 Vict. c. 27 
 Rules and Regulations . 
 
 PAGE 
 
 345 
 351 
 356 
 358 
 360 
 
 385 
 385 
 386 
 386 
 387 
 388 
 393 
 394 
 398 
 401 
 405 
 406 
 
INDEX TO CASES CITED. 
 
 Adams' Patent, 168. 
 Adamson's Patent, 27. 
 Allan's Patent, 200, 202. 
 Allen V. Rawson, 8, 16, 67, 117. 
 Amies v. Kelsey, 295. 
 Amory v. Brown, 325. 
 Arkwright v. Nightingale, 77, 78, 
 
 122, 130. 
 Arnold v. Bradbui-y, 61, 93, 318. 
 Aube's Patent, 183, 191. 
 
 Bacon v. Jones, 303, 304, 312, 
 313, 314. 
 
 V. Spottiswoode, 313. 
 
 Bailey v. Taylor, 330. 
 Bailey, ex parte, 150, 163, 164. 
 Bainbridge v. Wigley, 88. 
 Baird v. Wilson, 237. 
 Bakewell's Patent, 201, 202. 
 Bai-ber v. Grace, 52, 93, 118, 
 
 270. 
 
 V. Walduck, 7. 
 
 Barker v. Shaw, 7. 
 Basket v. Cunningham, 311. 
 Bateman v. Gray, 54, 95, 245, 
 
 248, 280. 
 Bates & Redgate, ex parte, 149, 
 
 161, 164, 168. 
 Baxter's Patent, 212. 
 Baxter v. Coombe, 45, 238, 309, 
 
 315. 
 
 Beard v. Egerton, 10, 85, 107, 
 
 HI, 123,^27, 147. 
 Bentley v. Fleming, 28, 33. 
 
 ». Keighley, 291. 
 
 Berrington's Patent, 202. 
 Ben-y's Patent, 188, 204. 
 Besseman v. Wright, 237. 
 Betts V. Cliflford, 338. 
 Betts V. De Viti-e, 19, 277, 325, 
 
 331, 332-, 335, 337, 338. 
 
 V. Gallais, 334. 
 
 ^ V. Menzies, 23, 24, 49, 78, 
 
 87, 113,115^122,311. 
 V. NeUson, 17, 18, 25, 26, 
 
 118,276, 310. 
 
 V. Walker, 74, 290. 
 
 V. Wilmot, 233, 328. 
 
 Betts' Patent, 183, 184, 185, 190, 
 
 191, 197, 202, 207, 208. 
 Bewley v. Hancock, 68, 71. 
 Biokford v. Skewes, 83, 86, 108, 
 
 109, 117, 123, 306, 309, 328. 
 Bircot's Case, 50, 51. 
 Blake's Patent, 190, 191, 192, 
 
 193, 196. 
 Blamond, Re, 168. 
 Blofield V. Payne, 278. 
 Bloxam v. Elsee, 7, 10, 76, 82, 
 
 90, 110, 118, 232, 284,287. 
 Bodmer's Patent, 176, 183, 188, 
 
 191, 197, 213. 
 
vm 
 
 IITOBX TO CASES CITED. 
 
 Booth V. Kennard, 16, 67, 72, 88, 
 
 117. 
 Boulton V. Bull, 9, 12, 21, 33, 
 
 36, 40, 41, 42, 50, 73, 75, 78, 
 
 85, 97, 119, 122, 285, 306, 
 
 309. 
 BoviU V. Crate, 315, 327. 
 
 V. Pinch, 183. 
 
 V. G-oodier, 307, 308, 316, 
 
 323. 
 
 V. Hadley, 299. 
 
 V. Hitchcock, 320. 
 
 V. Keyworth, 49, 55, 265. 
 
 V. Moore, 53, 54, 74, 96, 
 
 101, 106, 119, 247, 335. 
 
 V. Pimm, 48, 113, 243. 
 
 V. Smith, 324, 329. 
 
 Bovill's Patent, 186, 198. 
 Bower v. Hodges, 232. 
 Bowman v. Taylor, 237. 
 Bramah v. Hardcastle, 24, 26, 
 
 99. 
 Brandies' Patent, 162. 
 Brennand's Patent, 159. 
 Bridson v. Benecke, 309, 315. 
 
 V. M' Alpine, 304, 309, 313. 
 
 Bridson's Patent, 218. 
 Brook V. Aston, 63. 
 Brough, Re, 166. 
 Brown ». Annandale, 9. 
 Brunton v. Hawkes, 15, 52, 63, 
 
 74, 104, 119, 149. 
 Bulnois V. Mackenzie, 290, 291. 
 Bush V. Fox, 15, 34, 63, 73, 116. 
 Bynner v. Reg., 344. 
 
 Calcraft v. "West, 303. 
 
 Caldwell v. Vanvlissingen, 165, 
 
 307, 308, 309, 312. 
 Campbell's Patent, 163, 167. 
 
 Campion v. Benyon, 79. 
 Cannington v. Nuttall, 45, 54, 
 
 57, 107, 132, 267. 
 Card's Patent, 222, 224. 
 CardweU's Patent, 182, 194. 
 Carpenter v. Smith, 5, 9, 20, 22, 
 
 30, 55, 106. 
 Carpenter's Patent, 212. 
 Cartwright v. Amatt, 109, 230. 
 Chambers v. Crichley, 237, 
 Chanter v. Dewhurst, 232. 
 
 V. Johnson, 232. 
 
 ChoUet V. Hoffman, 240, 289. 
 Claridge's Patent, 186,187, 189, 
 
 195, 204. 
 Clark V. Ferguson, 312. 
 
 V. Kenrick, 136. 
 
 Clark's Patent, 206, 207, 210. 
 Clothworkers of Ipswich Case, 
 
 2,8. 
 Cobley's Patent, 164. 
 Cochrane v. Braithwaite, 93. 
 
 V. Smethurst, 149. 
 
 Collard v. Alison, 308, 313. 
 Cook V. Pearce, 146. 
 Copeland v. Webb, 311, 317. 
 Cornish v. Keene, 5, 7, 12, 16, 
 
 19, 33, 55, 67, 104, 280. 
 Crane v. Price, 9, 34, 36, 38, 39, 
 
 53, 87, 101. 
 CroU V. Edge, 148. 
 Crompton o. Ibbetson, 121. 
 Crossley v. Beverley, 87, 103, 
 
 111, 125,271, 315. 
 V. Derby Gas Company, 
 
 331. 
 
 V. Dixon, 232, 237, 238. 
 
 V. Potter, 42, 74, 83, 95. 
 
 ■ V. Stewart, 329. 
 
 Cui-tis V. Cutts, 307. 
 
INDEX TO CASES CITED. 
 
 IX 
 
 Curtis w. Piatt, 37, 248, 268,277, 
 
 299, 318, 321, 322. 
 Cutler's Patent, 164, 279. 
 
 Dames' Patent, 162. 
 Dangerfield v. Jones, 45, 100, 
 
 238. 
 Darcy v. Allin, 2, 8 , 
 Davenport v. Jepson, 317, 318, 
 
 324, 335, 336. 
 
 V. Goldberg, 308, 319. 
 
 V. Richard, 282, 310. 
 
 V. Rylands, 332, 333, 339. 
 
 Daw V. Eley, 32, 107, 118, 191, 
 
 192, 315, 323, 324, 329. 
 De la Kue v. Dickenson, 73, 266, 
 
 279, 330. 
 Derosne v. Fairie, 54, 66, 80, 83, 
 
 86, 88, 110, 112, 287. 
 Derosne's Patent, 182, 197, 198, 
 
 199, 203, 214. 
 De Vitre v. Betts, 332. 
 DiUy V. Doig, 326. 
 Dismore, Re, 167. 
 Dobbs V. Penn, 15. 
 DoUond's Patent, 21. 
 Downton's Patent, 186, 195, 202, 
 
 218. 
 Dudgeon v. Thompson, 311. 
 DunniclifF v. Mallett, 286, 287. 
 Duvergier v. Fellows, 231. 
 
 Edgeberry v. Stephens, 8. 
 Edwards v. Normandy, 331. 
 Electric Telegraph Company v. 
 
 Brett, 48, 53, 100, 246, 262, 
 
 285. 
 
 V. Nott,291, 306, 309, 312. 
 
 Elgie V. Webster, 228. 
 Elliott V. Aston, 32, 123. 
 
 Elliott M. Turner, 111. 
 EUwood V. Christy, 302. 
 Elmslie v. Boursier, 274. 
 Erard's Patent, 185, 199, 214, 
 217. 
 
 Fawcett's Patent, 160. 
 Feather v. Reg, 156, 157. 
 Felton V. Greaves, 88. 
 Fernie v. Young, 317, 321, 
 
 322. 
 Finlay v. Allen, 266. 
 Fisher v. Dewick, 289. 
 Foarde's Patent, 205. 
 Forsyth v. Rivifere, 7, 15, 93, 
 
 272. 
 Fox, ex parte, 53, 118, 164. 
 Fox V. Dellestable, 53, 334. 
 Foxwell V. Bostock, 55, 101, 107, 
 
 119, 123, 132, 137, 152. 
 Webster, 326, 329, 330. 
 
 Galloway v. Bleaden, 30, 89, 123, 
 
 243, 281, 282. 
 Galloway's Patent, 184, 197, 206, 
 
 216, 218. 
 Gamble v. Kurtz, 54, 96. 
 Gardner v. Broadbent, 312, 327. 
 Geary v. Norton, 310, 338. 
 Gibson v. Brand, 23, 37, 38, 79, 
 
 104, 122, 273. 
 Gillett V. WUby, 262, 298. 
 
 V. Green, 298. 
 
 Gittins V. Symes, 296. 
 Goucher v. Clayton, 238, 276. 
 Goucher's Patent, 182. 
 Greaves v. Eastern Counties 
 
 Railway, 299, 300. 
 Green's Patent, 240, 241. 
 Griffith's Patent, 160. 
 
INDEX TO CASES CITED. 
 
 Grover and Baker Sewing Ma- 
 chine Co. V. Millard, 237, 330. 
 
 Hall V. Boot, 37, 283. 
 
 V. Conder, 233, 237, 238. 
 
 Halliwell v. Dearman, 67. 
 Hancock v. Bewley, 232, 3l5. / 
 Hardy's Patent, 195, 199, 203, 
 
 206, 213. 
 Harmar v. Playne, 53, 101, 306. 
 Harris, Re, 167. 
 Harrison v. Great Northern 
 
 Railway Co., 23. 
 Harwood v. Great Northern Rail- 
 way Co., 23, 59, 65, 247. 
 Hassall v. Wright, 240, 325. 
 Hastings v. Brown, 90. 
 Hatton u. Kean, 8. 
 Haworth v. Hardcastle, 75, 76, 
 
 107, 109. 
 Hayne v. Maltby, 238. 
 Heath v. Smith, 25, 52. 
 V. Unwin, 254, 257, 277, 
 
 290. 
 Heath's Patent, 180, 184, 185, 
 
 186, 198, 211. 
 Heathcote, ex parte, 166. 
 Heathom's Patent, 159. 
 Henderson v. Runcorn Soap and 
 
 Alkali Company, 318. 
 Henry, ex parte, 150, 151, 160, 
 
 161, 162. 
 Henson, ex parte, 160. 
 Herbert's Patent, 200, 201, 
 
 213. 
 Hersee & Smyth, Re, 158. 
 Hesse v. Stevenson, 231. 
 Heurteloupe's Patent, 223. 
 Hicks V. Raincock, 306. 
 Higgs V. Godwin, 70, 273. 
 
 Hill V. Thompson, 15, 21, 52, 53, 
 54,74,79,82,87,97,102,112, 
 117, 144, 243, 269, 282, 304, 
 306, 309, 312, 313, 327, 328. 
 
 V. Mount, 169. 
 
 Hills V. Evans, 16, 17, 113, 115, 
 313, 335, 338, 339. 
 
 V. Laming, 227. 
 
 V. Liverpool Gas Company, 
 
 68, 121,261. 
 
 V. London Gas Company, 
 
 31,47,68,70,73,78, 85, 117, 
 
 147. 
 Hill's Patent, 185, 192, 195, 198, 
 
 199, 200, 202, 205, 206, 207, 
 
 219. 
 Hoffman v. Postill, 328, 329. 
 Holland v. Fox, 300, 301, 302. 
 Holmes v. London and North 
 
 Western Railway Company, 
 
 79, 104, 274. 
 Honiball v. Bloomer, 298. 
 Honiball's Patent, 33, 182, 188, 
 
 203, 219, 222, 224, 225. 
 Hornblower v. Boulton, 40, 42, 
 
 51, 96, 122. 
 Hornby's Patent, 218. 
 Horsley and Knighton's Patent, 
 
 242. 
 Horton v. Mabon, 39, 64. 
 Houghton's Patent, 199,210, 211. 
 HousehUl Iron Company v. 
 
 Neilson, 13, 20, 31, 44, 82, 
 
 108, 111, 123, 126, 143. 
 Howe V. M'Keman, 329. 
 Huddart w. Grimshaw, 7, 15, 52, 
 
 54, 71, 75, 82, 85, 122, 282. 
 Hull V. Bollai-d, 292. 
 HuUett V. Hague, 16, 43, 72, 74, 
 "^ 108. " '■ "~- 
 
INDEX TO CASES CITED. 
 
 XI 
 
 Hutchison's Patent,211, 215, 216, 
 
 217. 
 Hyde V. Palmer, 284. 
 
 Johnson's Patent, 189, 191, 192, 
 196, 199, 203, 209, 215, 219. 
 
 Johnson and Atkinson's Patent, 
 186, 215. 
 
 Jones V. Berger, 14, 290. 
 
 — V. Lees, 239, 294. 
 V. Heaton, 87. 
 
 w. Pearce, 5, 6, 29, 30, 46, 
 
 270, 273, 306. 
 
 V. Pratt, 292. 
 
 Jones' Patent, 181, 182, 201, 
 
 203, 219. 
 Jordan v. Moore, 60. 
 Jupe V. Pratt, 42, 271. 
 
 Kay V. Marshall, 72, 92, 93, 103, 
 
 325. 
 Kay's Patent, 185, 207. 
 Kernot v. Potter, 330, 331. 
 Knowles v. Bovill, 236. 
 Kollman's Patent, 198, 203. 
 Koops, ex parte, 166. 
 
 Lamenaude's Patent, 223, 224, 
 
 225. 
 Lancaster's Patent, 212. 
 Lang V. Gisbome, 13, 14, 32. 
 Lawes v. Purser, 237, 238. 
 Leaf D. Topham, 290. 
 Ledsam v. Russell, 178, 183, 187. 
 Lee V. Walker, 168. 
 Lee's Patent, 183, 184. 
 Lewin v. Brown, 230. 
 Lewis V. Davis, 35, 53, 76. 
 V. Marling, 5, 17, 22, 29, 
 
 30, 73, 76, 81, 83, 85, 89. 
 
 Liardet v. Johnson, 11, 34, 78, 
 
 81,87. 
 Lister v. Eastwood, 267, 312. 
 V. Leather, 53, 56, 91, 104, 
 
 106, 107, 136, 232, 265, 267, 
 
 276, 279, 309, 3,39. 
 Losh V. Hague, 6, 26, 37, 51,54, 
 
 57, 72, 104, 297, 298, 310, 314. 
 Lovell V. Hicks, 228, 229, 237. 
 Lowe's Patent, 161, 216, 217. 
 Lukie V. Robson, 54. 
 
 M'Alpine v. Mangnall, 94, 102, 
 
 232. 
 M'Connick v. Gray, 15, 19, 106, 
 
 265. 
 MaeDougal's Patent, 184, 194, 
 
 200, 202. 
 MacFarlane v. Price, 100, 119. 
 Maclnnes' Patent, 200, 207, 208. 
 Macintosh's Patent, 158, 205, 
 
 218. 
 Mackean's Patent, 163. 
 Mackelcan u. Rennie, 61, 81, 153. 
 Macnamara v. Hulse, 82, 91, 121, 
 
 276, 280, 289. 
 Mallet's Patent, 207, 212. 
 Manoeaux, ex parte, 161, 162, 
 
 164. 
 Manton v. Manton, 74, 123, 281. 
 
 V. Parker, 72, 74. 
 
 Markwick's Patent, 195, 200, 
 
 203, 211, 212. 
 Mather v. Green, 232, 331. 
 Mayer v. Spence, 327, 328. ■ 
 Meadows v. Kirkman, 295. 
 Milligan v. Marsh, 9, 10. 
 Milner's Patent, 218, 219. 
 Minter v. Mower, 19, 24, 42, 67, 
 
 110, 122. 
 
Xll 
 
 INDEX TO CASES CITED. 
 
 Minter v. Wells, 6, 46, 74, 94, 
 271,281. 
 
 V. Williams, 273. 
 
 MitclieU's Patent, 159. 
 More/s Patent, 241. 
 Morgan v. Puller, 318, 323. 
 
 u. Seaward, 12, 19, 25, 34, 
 
 51, 73, 74, 75, 76, 77, 79, 81, 
 104, 109, 118, 121, 122, 124, 
 126, 244, 247, 309, 335. 
 
 Morgan's Patent, 181, 182, 187, 
 
 195, 202. 
 Morris v. Bransom, 50, 100. 
 Morton v. Middleton, 78, 117, 
 
 118, 136. 
 Moxon V. Bright, 331. 
 Mullins V. Hart, 26. 
 Muntz V. Poster, 5, 15, 16, 19, 
 
 24, 56, 87, 109, 114, 116, 121, 
 
 249, 250, 273, 277, 282, 307, 
 
 342. 
 
 V. Grenfell, 311. 
 
 Muntz's Patent, 197, 206, 209. 
 Murray v. Clayton, 30, 32, 39, 
 
 56, 101. 
 Myers v. Baker, 165. 
 
 Napier's Patent, 186, 203. 
 Needham v. Oxley, 319, 321, 322, 
 
 337, 338. 
 STeilson v. Baird, 118. 
 
 v. Betts, 19, 93, 109, 276, 
 
 280, 283, 310, 332, 335. 
 
 V. Forman, 305. 
 
 V. Pothergill, 238. 
 
 V. Harford, 43, 75, 76, 82, 
 
 86, 108, 110, 112, 123, 125, 
 126, 146, 246, 290, 292, 308, 
 309. 
 V. Thompson, 93, 305, 315. 
 
 Newall V. Elliott, 40, 151, 270, 
 
 272, 312. 
 Newall and Elliott, Re, 26, 28, 
 
 153, 284. 
 
 V. Wilson, 307, 308. 
 
 Newberry v. James, 78. 
 Newton v. Grand Junction Rail- 
 way Company, 56, 57, 263. 
 
 V. Vaucher, 66, 108, 267. 
 
 Newton's Patent, 189, 192, 197, 
 
 203, 207. 
 Nickels v. Haslam, 144. 
 
 V. Ross, 9, 100. 
 
 Nickel's Patent, 167. 
 Noble's Patent, 188, 215. 
 Normand's Patent, 188, 192. 
 Normandy's Patent, 212, 217. 
 Norton's Patent, 187, 193, 195, 
 
 201, 202. 
 Noton V. Brooks, 236, 237. 
 Nunn V. D' Albuquerque, 277, 
 
 331, 338. 
 
 Oldham v. Langmead, 237. 
 Ormson v. Clarke, 64, 100. 
 Oxford and Cambridge Univer- 
 sities V. Richardson, 303. 
 Oxley V. Holden, 17, 26, 95, 146. 
 
 Palmer v. Cooper, 288, 291. 
 
 V. Wagstaff, 71, 108, 283, 
 
 291. 
 
 Parkes v. Stevens, 56, 101, 106. 
 
 Patent Bottle Envelope Com- 
 pany V. Seymour, 62, 266. 
 
 Patent Marine Inventions Com- 
 pany V. Chadburn, 320. 
 
 Patent Type Company u.Richards, 
 245. 
 
 V. Walter, 87, 295, 313, 336. 
 
INDEX TO CASES CITED. 
 
 Xlll 
 
 Patterson's Patent, 201. 
 Penn v. Bibby, 65, 143, 153, 310, 
 322, 324, 333, 339. 
 
 V. Jack, 319, 333, 335. 
 
 Pering, ex parte, 157. 
 
 Perkins' Patent, 182, 204, 206, 
 
 207, 208, 211, 215. 
 Perry v. Mitchell, 291. 
 
 V. Skinner, 139. 
 
 Pettit Smith's Patent, 182, 186, 
 199, 211, 217. 
 
 Pidding v. Franks, 238, 309. 
 
 Piggott V. Anglo-American Tele- 
 graph Company, 335. 
 
 Pinkus' Patent, 184, 194, 200,202. 
 
 Pitman's Patent, 187, 216. 
 
 Poole's Patent, 191, 203, 208. 
 
 Porter's Patent, 186. 
 
 Pow V. Taunton, 58, 96. 
 
 Pow's Patent, 9, 225. 
 
 Price's Patent Candle Company 
 V. Bauwen's Patent Candle 
 Company, 315, 330. 
 
 Protheroe v. May, 232. 
 
 Quarrill's Patent, 204, 206. 
 
 Ralston v. Smith, 34, 61, 78, 91, 
 
 132. 
 Redmund, Re, 167. 
 Reg. V. Betts, 340. 
 
 V. Cutler, 342. 
 
 V. Eastern Archipelago 
 
 Company, 344. 
 
 V. Hancock, 342. 
 
 V. Mm, 132, 135, 136, 139, 
 
 147, 341, 342. 
 V. Prosser, 343. 
 
 Renard v. Levinstein, 103, 287, 
 306, 310, 312, 320, 322, 324, 329. 
 
 Rex V. Arkwright, 6, 7, 12, 74, 
 
 78, 82, 100, 104, 112, 121, 
 124, 125. 
 
 V. Cutler, 42, 58, 89, 96, 
 
 100, 163. 
 
 V. Elsee, 100. 
 
 V. FusseU, 124. 
 
 V. Haddan, 342. 
 
 V. Metcalfe, 148. 
 
 V. Wheeler, 6, 19, 34, 42, 
 
 79, 11], 120, 148. 
 Ridgeway v. Phillip, 228, 229. 
 Robert's Patent, 198, 207. 
 Robinson's Patent, 9, 225. 
 Rubery's Patent, 167. 
 Rushton V. Crawley, 63, 65, 79. 
 Russell V. Cowley, 35, 67, 108, 
 
 272, 308, 335. 
 
 V. Crichton, 281. 
 
 V. Ledsam, 164, 290, 291. 
 
 Russell's Patent, 8, 160, 162, 187, 
 
 198, 213, 232. 
 
 Saunders v. Aston, 72, 99, 100. 
 
 Savory v. Price, 82. 
 
 Saxby v. Easterbrook, 296, 301. 
 
 u. Hennett, 164. 
 
 Saxby's Patent, 184, 205, 208, 
 
 210. 
 Schlumberger, Re, 156, 182, 189, 
 
 219. 
 Scott and Young, ex parte, 161, 
 
 164. 
 Seed V. Higgins, 72, 107, 116, 
 
 134, 269. 
 Sellers v. Dickinson, 56, 68, 108, 
 
 247, 262, 280. 
 Sharp's Patent, 167. 
 Shaw V. Bank of England, 294. 
 Sheffield, ex parte, 159. 
 
XIV 
 
 INDEX TO CASES CITED. 
 
 Simister's Patent, 199, 200, 202. 
 Simpson v. Holliday, 107, 112, 
 
 113, 125, 129, 321. 
 Simpson and Isaac's Patent, 161, 
 
 167. 
 Singer Sewing Machine Company 
 
 V. Wilson, 336. 
 Smith V. Davidson, 22, 273. 
 
 V. Dickinson, 25. 
 
 v. Great Western Railway 
 
 Company, 295. 
 
 V. London and North 
 
 Western Railway Company, 
 264, 287. 
 V. London and South West- 
 em Railway Company, 315, 
 330. 
 
 V. Neale, 230, 236. 
 
 V. Scott, 236, 237. 
 
 V. Upton, 342. 
 
 Soames' Patent, 195, 197, 198. 
 Southworth's Patent, 186, 199, 
 
 201, 203, 214. 
 Spence's Patent, 160. 
 Spencer v. Jack, 72, 89, 113, 319. 
 Stafford's Patent, 203, 214. 
 Stead V. Anderson, 9, 14, 19, 24, 
 
 108, 243, 278. 
 • V. Williams, 14, 24, 31, 74, 
 
 78, 147. 
 Stead's Patent, 222, 223, 225. 
 Steedman v. Marsh, 10. 
 Steiner v. Heald, 65, 68, 73. 
 Stevens v. Keatmg, 19, 37, 39, 68, 
 
 83, 108, 114, 121, 250, 257, 
 
 277, 307, 337. 
 Stocker v. Rodgers, 298. 
 
 V. Warner, 136. 
 
 Stocking V. Llewellyn, 328. 
 Stoll's Patent, 160, 162. 
 
 Sturtz V. De la Rue, 80, 83, 114, 
 
 123, 144, 327. 
 Swaine's Patent, 198. 
 Swinborne v. WilSon, 328. 
 
 Talbot V. La Roche, 289. 
 Tangye v. Stott, 320, 337. 
 Taylor v. Hare, 237. 
 Templeton v. Macfarlane, 104. 
 Tennant's Case, 5, 6, 19, 22. 
 Tetley v. Baston, 61, 76, 80, 92, 
 
 95, 117, 136, 292. 
 Thomas v. Poxwell, 106, 113, 117, 
 
 265, 267. 
 
 V. Hunt, 232. 
 
 V. Tillie, 292. 
 
 V. Welch, 78, 92, 135, 136, 
 
 151. 
 Thompson v. James, 65. 
 ToLhausen's Patent, 163. 
 Tolson's Patent, 160, 335. 
 Trotman v. Wood, 236, 238, 301. 
 Trotman's Patent, 205, 210. 
 Turner v. Winter, 73, 83, 89, 1 09, 
 
 120, 280. 
 
 Unwin V. Heath, 254, 277. 
 
 Vidi V. Smith, 295, 301. 
 Vincent's Patent, 159, 160, 162. 
 
 Wallington v. Dale, 68, 117, 137, 
 
 138. 
 Walton V. Bateman, 9, 31, 33, 42, 
 
 80, 123, 244, 342. 
 V. Lavater, 237, 239, 274, 
 
 287, 302. 
 V. Potter, 5, 12, 67, 71, 79 
 
 116, 117, 244, 279. 
 Warwick v. Hooper, 239. 
 
INDEX TO CASES CITED. 
 
 XV 
 
 "Watson V. Pears, 167. 
 
 Webster v. Uther, 247. 
 
 Westhead v. Keene, 325, 326. 
 
 Westrupp anci'Gribbins' Patent, 
 33, 218, 222, 224, 225. 
 
 White V. Fenn, 265. 
 
 V. Toms, 65. 
 
 Whitehouse's Patent, 187, 195, 
 198, 213. 
 
 Whitten v. Jennings, 327. 
 
 Wield's Patent, 211, 218, 219. 
 
 Wilcox Sewing Machine Com- 
 pany V. Wood, 316. 
 
 Williams v. Brodie, 99. 
 
 V. Nash, 168. 
 
 Willis V. Davison, 63. 
 Winan's Patent, 191, 192, 196. 
 Wood V. Cockrell, 306. 
 
 V. Zimmer, 25, 79, 80. 
 
 Woodcroft's Patent, 71, 184, 195, 
 
 197, 198, 201, 203, 217. 
 Wright V. Hitchcock, 102, 144, 
 
 151, 274, 277. 
 Wright's Patent, 186, 198, 199, 
 
 200, 201, 214, 216. 
 
 Yates, ex parte, 161, 164. 
 Young V. Fernie^ 17, 68, 
 284, 317. ^^ 
 
 130, 
 
TABLE OF STATUTES. 
 
 PACE 
 
 21Jac.I.G.3 . 2,5,8,10,73 
 
 15 & 16 Vict, c 
 
 . 83, 6 
 
 PAGE 
 . 8. 
 
 6 Geo. IV. c. 50, s. 34 . 300 
 
 143, 149 
 
 3 & 4 Wm. IV. c. 41 . 182 
 
 - 
 
 1 en 1 c A 
 
 D. a 
 
 
 
 JLUU, XO'± 
 
 5 & 6 Will. IV. c. 83, s. 1 
 
 s. 10 . 
 
 
 
 154, 162 
 
 131, 136, 137, 138, 139 
 
 " 11 
 
 
 
 . 154 
 
 ' B. 11 
 
 » O 1 .1 OOA 
 
 „ -tn 
 
 
 
 . 154 
 
 . 155 
 
 . 155 
 
 . 156, 340 
 
 S. Z .... !■*, ^ZU 
 
 fa. 1^ 
 
 
 
 b. O ... ^Ul, £iiJO 
 
 « A 1*7 /r Ci-i A Cite 
 
 " 1 J. 
 
 
 
 fa. * . . i/Jj ZJ.'i, .ilD 
 
 fa> 14 . 
 " It 
 
 
 
 o. «J ^ol 
 
 
 r, a nc\£* nno 
 
 " Ifi 
 
 
 
 . 156 
 157, 172 
 
 S. D ... .^470, ^ifo 
 
 " 19 
 
 
 
 S. / lOO 
 
 fa. lo 
 
 2 & 3 Vict. c. 67, s. 1 . 175 
 
 r- 10 
 
 
 
 . 157 
 
 
 « n ^T^ 
 
 " Clfl 
 
 
 
 . 158 
 
 S. .^ lit 
 
 fa. .^U 
 
 7 & 8 Vict. c. 69, s. 2 . 178 
 
 _, Q gi 
 
 
 
 . . 159 
 
 "" S. .^1 
 
 "0 1*70 
 
 « on 
 
 
 
 . 159 
 
 
 fa. ^Ji . 
 
 „ A 1 OC 
 
 .. f^O 
 
 
 
 . 164 
 
 s. * loo 
 
 
 „ K 1 OT ion O/lrt 
 
 „ nA 
 
 
 
 . 165 
 
 S. O . . lO/, lt>>7j o^u 
 
 
 12 & 13 Vict. c. 109 . 136, 340, 
 
 „ or 
 
 
 
 . 189 
 
 
 341 
 
 " Of? 
 
 
 
 . 165 
 
 
 14 & 15 Vict. c. 99, s. 6. 
 
 „ OIT 
 
 
 
 . 166 
 
 a* Zt 
 
 217, 295 
 
 T "0 
 
 
 
 . 172 
 
 
 15 & 16 Vict. c. 83, s. 1 . 170 
 
 -r 9n 
 
 
 
 . 173 
 
 S. OV 
 
 « O 1 *rA f>>TO 
 
 1 *l" 
 
 
 
 . 173 
 
 S. .^ . . . , liVy Zio 
 
 
 « O 1*71 
 
 1 •I'l 
 
 
 
 . 173 
 
 S. o 1(1 
 
 H. O* 
 
 » A i*ri 
 
 rt 9^ 
 
 
 227 
 
 ,240,242 
 . 227 
 
 S, 4 1/1 
 
 „ ff ItTl 
 
 a. oO 
 
 1 ifi 
 
 a* O 1/1 
 
 
 ^, a 1 Aci 
 
 1 *IT 
 
 
 
 . 241 
 
 D. D 14^ 
 
 H. O/ 
 
 s. 7 143 
 
 s. 38 . 
 
 
 
 . 241 
 
XVIU 
 
 TABLE OXf STATUTES. 
 
 PAGE 
 
 15 & 16 Viot. c. 83, s. 39. 
 
 136, 138, 139, 140 
 
 s. 40 179 
 
 s. 41. 287, 322, 324, 
 
 341, 342 
 
 s. 42 . . 294, 296, 300 
 
 s. 43 . . . 297, 337 
 
 ss. 47—51 ... 174 
 
 15 & 16 Vict. c. 86, ss. 
 
 61, 62 316 
 
 16 Vict. u. 5, s. 2 . . 140, 168 
 ss. 3—6 .... 169 
 
 PAOJE 
 
 16 Vict. c. 115, s. 2 . . 173 
 
 16 Vict. c. 115, s. 3 . . 171 
 
 s. 4 278 
 
 s. 5 .... 172, 279 
 
 s. 6 .... 158, 167 
 
 s. 7 .... 181, 183 
 
 17 & 18 Vict. c. 125, s. 51 . 292 
 s. 32 296 
 
 21 & 22 Vict. 0. 27 . 316, 321 
 
 22 Vict. c. 13 . . . . 157 
 25 & 26 Vict. c. 42 . . 316 
 33 & 34 Vict. c. 27 . . 32 
 
THE LAW AND PRACTICE RELATING TO 
 LETTERS PATENT FOR INVENTIONS. 
 
 CHAPTER I. 
 
 OF THE GRANT OF LETTEES PATENT. 
 
 ' I ^HE right to grant monopolies to inventors of new Chap. i. 
 
 ■*- manufactures has always been considered as part of »« T" 
 the prerogative of the Crown. Sir Edward Coke defines 
 monopolies as foUows: "A monopoly is an institution 
 or allowance by the king ; by his grant, commission, or 
 otherwise, to any person or persons, bodies politic or 
 corporate, of or for the sole buying, selling, making, 
 working, or using of any thing whereby any person or 
 persons, bodies politic or corporate, are sought to be 
 restrained of any freedom or liberty that they had before, 
 or hindered in their lawful trade." (a) 
 
 The grant is by " letters patent," that is, open letters, 
 littercB patentes : so called bfecause they are not sealed up 
 but exposed to open view, with the great seal pendent at 
 the bottom ; and are usually directed or addressed by the 
 Sovereign to aU her subjects' at large, in this respect 
 differing from other letters of the sovereign which are 
 closed up and sealed on the outside, and are therefore 
 called writs close^ Utter ce cIomscb. {b) 
 
 (a) 3 Inst. 181. (6) 2 Bl. Com. 349 (Kerr). 
 
 B 
 
2 GEANT OF LETTERS PATENT. 
 
 CiiAP. I. Before the statute of monopolies (21 Jac. I. o. 3) was 
 
 passedj it was decided that a monopoly might be granted 
 to any person who " by his own charge and industry or 
 by his own wit or invention doth bring any new trade into 
 the realm," (a) and in the Oloth-workers of Ipswich case, (6) 
 it was said that "if a man hath brought in a new inyention 
 and a new trade within the kingdom in peril of his Hfe and 
 consumption of his estate or stock, or if a man hath made 
 a new discovery of anything, in such cases the king of 
 his grace and favour, in recompence of his costs and 
 travail, may grant by charter unto him, that he only 
 shall use such a trade or trafique for a certain time because 
 at first the people of the kingdom are ignorant and have 
 ^ not the knowledge or skill to use it." 
 
 Term of These principles were followed in the statute, which, 
 
 after declaring monopolies to be void, enacts that " any 
 declaration before mentioned shall not extend to any 
 letters patent, 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 manufacture, 
 within this realm to the true and first inventor and 
 inventors of such manufactures, which others at the time 
 . of making such letters patent and grants shall not use, so 
 that they be not contrary to law or mischievous to trade, 
 by raising the prices of commodities at home or hurt of 
 trade or generally inconvenient." This statute does not 
 introduce a new law, but is simply declaratory of the 
 common law and simply exempts patents which were 
 good at common law from the penalty which the statute 
 
 (a) Darcy v. Allin, Noy. 182 ; , (J) Godb. 254. 
 Shepp. Abr. part III. tit. Prerog. 
 p. 61. 
 
GRANT OF LETTERS PATENT. 3 
 
 imposes upon such patents as were thereby prohibited, (a) Chap. I. 
 The object of granting patents is that the person^ who object of 
 has benefited the public by bringing some new and use- S'^f^^J^S 
 ful manufacture into the country, may be rewarded for his 
 ingenuity and trouble, and for the expense^ to which he 
 has been put. 
 
 A patent is not a grant of a monopoly in the sense of 
 the old definition, but is a grant by the Crown to an 
 inventor, of the right of practising a new and useful 
 invention for a limited time. The patentee may be 
 looked upon as a purchaser from the pubKcj for an 
 inventor has "not an exclusive property in an invention, 
 he has only the right to exercise his own invention freely 
 for a limited period ; and the consideration for which this 
 grant is made, is the benefit to the public resulting from 
 the inveiition by the use of it ; first, under the patent, and 
 secondly, after the term has expired. On the other hand 
 the patentee is not obliged to make his invention known, 
 he may keep it a secret ; it is therefore only reasonable 
 that if he makes it known he should receive some com- 
 pensation from the public, who are to have the' ultimate 
 benefit of the invention. 
 
 The mode of securing such compensation to the 
 patentee, adopted in this and in almost every other 
 country, namely, of granting to him the sole right of 
 using his invention for a limited time, seems to be the best 
 that can be devised. In certain cases where the merit 
 of the invention has been very great, or where the inven- 
 tor could not be rewarded in any other way, grants of 
 public money have been made, but it is evident that this 
 course could not be adopted in every case, not only from 
 
 (a) 3 Co. Inst. c. 85, pp. 181 — 184. 
 
4 GEANT OP LETTERS PATENT. 
 
 CuAP. I. the expenditure of money that would be required, but 
 also from the impossibility of ascertaining what the 
 , proper remuneration should be ; whereas by granting a 
 monopoly, the gain made by the inventor when his in- 
 vention is known will be proportionate to the amount of 
 benefit which the public derive from the use of it. 
 Utility. There must be a certain amount of utility in the in- 
 
 vention, otherwise a patent will not be granted (see post, 
 Ch. III.) (a) 
 
 (a) Sea as to the history of let- the Law of Patents ; Curtis on 
 ters patent for inventions, Hind- Patents (America), 
 march on Patents ; Webster on 
 
CHAPTER 11. 
 
 OF THE PERSONS TO WHOM LETTERS PATENT 
 MAY BE GRANTED. 
 
 T 
 
 HE Statute of Monopolies (21 Jac. I. c.' 3) provides Chap. II. 
 that letters patent may be granted to the " true and ,j,, TL, 
 first inventor." If the invention, for which a patent has inventor, 
 been taken out, isborrowed from a previous specification, (a) 
 or has been communicated by other persons in the king- 
 dom, (6) or has been previously' described in a book pub- 
 lished in the kingdom, (c) even if it has not been reduced 
 into practice, {d) and is in fact practically a new discovery 
 to the world, (e) or if there has been any public user of a 
 similar invention, (/) the patentee cannot be the " true 
 and first inventor." {g) 
 
 In order that a patent may be valid the subject matter invention 
 
 must be that 
 
 (a) Walton v. Potter, 1 Webs. Foster, 2 Webs. P. R. 102 ; Jones 
 
 P. R. 592 ; Lewis v. Marling, 4 v. Pearce, 1 Webs. P. R. 122. 
 C. & P. 52 ; 10 B. & 0. 27 ; 1 (d) Walton v. Patter, 1 Webs. 
 
 Webs. P. R. 495. P. R. 592. 
 
 (6) Cornish v. Keene, 1 Webs. (e) Cornish v. Keene, 1 Webs. 
 
 P. R. 507 ; Tennanfs Case, P. R. 507 ; Muntz V. Foster, 2 
 
 Dav. P. C. 29 ; 1 Webs. P. R. Webs. P. R. 102. 
 125 n. (/) Carpenter y. Smith, 9 M-St: 
 
 (c) Walton V. Potter, 1 Webs. W- 300 ; 1 Webs. P. K. 543. • 
 P. R. 592 ; Cornish v. Keene, 1 (g) See ahopost, Ch. III., pub- 
 Webs. P. R. 507 ; Muntz V. lication and user. 
 
PERSONS TO "WHOM LETTERS PATENT 
 
 Chap. II. 
 
 of patentee 
 bimself. 
 
 If not, the 
 Crown is de- 
 ceived 
 
 and the in- 
 terests of the 
 public affected. 
 
 must have been invented by the patentee himself, (a) and 
 he must have invented every part of what he claims to 
 have invented, (i) In Losh v. Hague, (c) Lord Abinger, 
 C.B., said -.""If a man claims by his patent a number of 
 things, as being the inventor of them, whether they con- 
 sist of improvements or original inventions, and it turns 
 out that some of them be not original and not improve- 
 ments, his patent is void." 
 
 If it can be shown that the patentee is not the inventor 
 of the patented article, the crown is deceived in the sug- 
 gestion on which the patent is granted, and the patent is 
 therefore void, (d) 
 
 It is against the interests of the public also that they 
 should be prevented from using the invention. The 
 object of the grant is to reward the inventor for the 
 future benefit to be received by the pubKc, and this 
 reason cannot apply to a person who has not invented the 
 machine, for the public are already entitled to use it. 
 
 " A patent," said Lord EUenborough, " is a species 
 of property highly important, as it respects the interests 
 of the individual, and with him also the interests of the 
 public ; on the one hand, persons who are really the 
 means of promoting any beneficial object should be 
 protected for the period the law allows, and should 
 have the benefit of the article so invented ; and on the 
 other hand, in case they are not, the inventors they should 
 not lock up from the public for that limited period of 
 
 (a) B. y.^rkwrighi, Dav. P. C. 
 68 ; R. V. Wheeler, 2 B. & Aid. 
 349 ; Jones v. Pearce, 1 Webs. 
 P. R. 124. 
 
 (ft) Tennanfs Case, 1 Webs. 
 P. R. 125, n. 
 
 (c) 1 Webs. P. R. 208. 
 
 (d) Minter v. Wells, 1 Webs. 
 P. R. 129 ; R. V. Wheeler, 2 B. 
 & Aid. 349. 
 
MAY BE GRANTED. 7 
 
 time that invention, whichj if they are not the inventors. Chap. II. 
 they have no priority to, and which ought to be open to 
 the public." (a) 
 
 If several persons simultaneously discover the same Sitiiultaneous 
 thing, the one who first communicates it to the public foTpSee 
 under the protection of a patent becomes the legal in- '' ™"^™tor. 
 ventor, and is entitled to the benefit of it. (&) If a servant invention by 
 while in the employment of his master invents a machine, ^®'^*°*" 
 the invention belongs to him and not to the master, (c) 
 But if an inventor employs mechanics to work out the Patentee may 
 details of his invention and to carry his idea into execu- ance. 
 tion, any thing suggested or invented by any person so 
 employed and subsidiary to such idea is the invention of 
 the patentee, (d) In Minter v. Wells, (e) it was suggested 
 that the invention was that of a mechanic named Sutton. 
 Alderson, B., said : " Minter and Sutton were together 
 about the time the invention took place ; which of the 
 two suggested the invention and which carried it intp 
 effect is a question for you to decide. If Sutton sug- 
 gested the principle to Mr. Minter, then he would be the 
 inventor. If, on the other hand, Mr. Minter suggested 
 the principle to Sutton, and Sutton was assisting him, 
 then Mr. Minter would be the first and true inventor, 
 and Sutton would be a machine, so to speak, which 
 Mr. Minter used for the purpose of enabling him to carry 
 his original conception into effect." (/) 
 
 (a) Hvddart v. Orimshaw, 1 wright, Dav. P. C. 61 ; 1 Webs. 
 
 Webs. P. K. 86 ; Dav. P. C. P. R. 64. 
 265. (rf) Barker v.'Shaw, iWebs. 
 
 (fi) Forsythv.Rwiere,lWehB. P. R. 126; Barber v. Walduck, 
 
 P. R. 97 ; Cornish v. Keene, 1 1 C. & P. 567. 
 Webs. P. R. 508. (e) 1 Webs. P. R. 129. 
 
 (c) Bloxam v. Ehee, 1 C. & P. (/) And iaeBloxam v. Elsee, 
 
 558 ; 6 B. & C. 169 ; R. v. Ark- 1 C. & P. 558 ; 6 B. & C. 169. 
 
8 PEESONS TO WHOM LETTERS PATEKT 
 
 Chap. II. Tlie rule appears to be that where the principle and 
 
 ' object of the invention are complete vfithout the sug- 
 
 gestions of the servant, and his suggestions merely carry 
 out the intention of the inventor more easily, the validity 
 of the patent wiU not be affected. " It would be dif- 
 ficult," said Sir N. C. Tindal, C. J., "to define how far 
 the suggestions of a workman are to be considered as 
 distinct inventions by him, so as to avoid a patent in- 
 corporating them taken out by his employer. Bach 
 case must depend upon its own merits. But when we 
 see that the principle and the object of the invention are 
 complete without it, I think it is too much that a sug- 
 gestion 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." (a) See as to the terms on which 
 letters patent were granted, in the case of dispute between 
 master and servant. Be Russell's Patent. (&) 
 Importer of an/ The importer of an iuvention which has never before 
 true and'fiist) been UBgd in this country has from a very early period 
 
 inventor. ^ been Considered to be an inventor and entitled to letters 
 
 "patent, (c) 
 
 Invention The earliest case reported on this point since the 
 
 in^Engiimdr ' Statute of monopolies (21 Jac. I. c. 3) is the case of 
 Edgeberry v. Stephens, [d) where it was held that " if the 
 invention be new in England a patent may be granted, 
 J though the thing was practised beyond the aea before ; 
 
 (a) Allen v. Rawson, I C. B. (c) Darcy v. Allin, Noy. 182 ; 
 575 ; Hatton v. Kean, 7 C. B. Sheph. Abr. part. III. tit. PrerogjL 
 (N. S.) 275. . p. 5 ; Clothworkers of Ipswich \ 
 
 (b) 2 D. G. & J. 130 ; noted Case, Godb. 254. -^ 
 post under the head of sealing, (d) 2Salk.447; 1 Webs.-P. R. 
 tit. " Terms." 35. 
 
MAY BE GEANTED. 9 
 
 for tte statute- speaks of new manufactures within this^CnAp. il. 
 realm; so that if they be new here, it is within the I 
 statute ; for the act intended to encourage new devices / 
 useful to the kingdomj and whether learned by travel or/ 
 by study it is the same thing." (a) 
 
 In Walton v. Bateman,{b) Oresswell, J., said; "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 ugg,' it will 
 suffice." (c) 
 
 If a patent is taken out as for an original invention 
 when it is in fact communicated from abroad by a British 
 subject it is void, (d) 
 
 If an invention has been known in Scotland, a person 
 importing it into England cannot be considered the first 
 and true iuventor. (e) ' 
 
 When a patent was taken out in this country by a Patent may b 
 British subject and held by him as trustee for the inven- trustee for 
 tor, a foreigner, it was contended, that in order to come y°™tor! ™" 
 within the statute the person taking out the patent in 
 this country should be the meritorious importer, and not 
 merely servant or agent for the purpose of taking out 
 the patent for the benefit of the foreign inventor. Sir 
 N. C. Tindal said : " No authority is cited for such dis- 
 
 (a) See also Boultony. Bull, 2 P. R. 411; Nickels v. Boss, 8 
 
 H. Bl. 491. CJB^r23. 
 
 (6) 1 Webs. P. R. 615. (d) Milligan v. Marsh, 2 Jur. 
 
 (c) AnAieeCarpenier Y.Smith, (N. S.) 1083. 
 
 1 Webs. P. R. 535; Stead v. (e) Brown\.Annandale,SC& 
 
 Anderson, 2 Webs. P. R. 149 ; F. 437 ; Robinson's Patent, 5 
 
 Crane v. Price, 4 M. & Gr. 580; Moo. P. C. C. 65 ; S. C. nam. 
 
 S^Scott, N. R. 338 ; 1 Webs. Pow's Patent, 2 Webs. P. R. 2. 
 
10 TO WHOM LETTERS PATENT MAY BE GRANTED. 
 
 Chap. II. 
 
 Alien enemy. 
 
 Foreign in- 
 ventor parted 
 with interest 
 abroad. 
 
 Communi- 
 cation from 
 abroad, not 
 confidential, 
 entitles reci- 
 pient to patent. 
 
 And he may 
 improve on a 
 confidential 
 communica- 
 tion. 
 
 tinctioiij and so far as the public are concerned in interest 
 no such distinction is necessary." It was also contended 
 that the patent was inraHdj as being taken out in trust 
 for aliens residing abroad^ and this objection was also 
 overruled, (a) 
 
 In another case the point was raised whether a patent 
 could be taken out in trust for an alien enemy, but was 
 not decided. (6) 
 
 If the original inventor abroad has parted with his 
 discovery abroad, he may nevertheless take out a patent 
 here, as his right to an BngHsh patent is not affected by 
 the foreign transaction, (c) 
 
 Any person receiving a communication from abroad 
 may take out a patent if the communication is not con- 
 fidential. " I apprehend," said Sir W. P. Wood, V.C, 
 " that any person not being in a confidential position to- 
 wards the first inventor, receiving from a person abroad 
 an invention, is entitled, perhaps not in a strictly moral 
 view, but at all events according to law, to take out a 
 patent on his own account for an invention so com- 
 municated." {d) 
 
 And it appears that a person who receives a confiden- 
 tial communication from abroad which is useless in itself 
 and incapable of application may take out a patent for 
 his own benefit, if the effect of the communication is to 
 set him thinking, and leads to a discovery of a practical 
 mode of carrying out the idea, (e) 
 
 (a) Beard v. Egerton, 3_flt3. 
 J29. 
 
 (S) Bloxam v. Elsee, 1 C. & 
 P. 558 ; 6 B. & C. 169 ; and see 
 Beard v. Egerton, 3 C, B. 
 129. 
 
 (c) Beard v. Egerton, 3 C. B. 
 131. 
 
 (d) Steedman v. Marsh, 2 Jur. 
 (N. S.) 392. 
 
 (e) Milligan v. Marsh, 2 Jur. 
 (N. S.) 1083. 
 
CHAPTER III. 
 
 OF THE SUBJECT MATTER OF LETTERS PATENT. 
 
 ' I ^HB sixth section of the Statute of Monopolies ■ (2 1 Jac. Chap. ill. 
 
 -*■ I. c. 3) provides " that any declaration before men- jj^^^j. 
 tioned shall not extend to any letters patent and grants of 
 privilege for the term of fourteen yeass 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 manufactures, which 
 others at the time of making such letters patent and 
 grants shall not use, so as they be not contrary to the 
 law nor mischievous to the State by raising prices of com- 
 modities at home, or hurt of trade or generally incon- 
 vfenient." 
 
 In Liardet v. Johnson, (a) Lord Mansfield said that it 
 was always a question whether the invention was publicly 
 known and in use before the patent was taken out. It ' 
 win be convenient to consider first, what amount of publi- 
 cation and user will invalidate a patent : secondly what 
 constitutes a " new manufacture" within the meaning of 
 the statute, and thirdly whether the invention is useful, 
 which is a condition imposed by the common law and not 
 by the statute. 
 
 If the invention has been previously described in a Publication in 
 
 a book, which 
 
 (a) Bull (N. P.) 76 ; 1 Webs. P. R. 53. 
 
12 THE SUBJECT MATTER 
 
 Chap.- III. book published in tfciB coorjay, the patent will be Toid. 
 has b^^- In 22. V. ArkwrigU, (a) Buller, J., said : " It is admitted that 
 cuiated, invaii- ^^ {^ ^qj; ^ new discoverv, for Bmmerson's book was 
 
 dates sabse- •" . i_i_ j 
 
 quent patent, produced, which was printed a third time in 1773, and 
 that is precisely the same as this ; " and in the course of the 
 ,/ argument of Morgan v. /Seaw(isr(Z,(&) Alderson, B., refer- 
 ring to the case of DoUond's patent cited in Boulton v. 
 Bull, (c) said : " If Dr. Hall had published his discoveries 
 in a book, I apprehend that would have put an end to Dol- 
 lond's patent." (cZ) In Oornishv.Keene, (e) the sameleamed 
 judge said: "Although it is proved J;hat this is a new 
 discovery so far as the world is concerned, yet if any- 
 body is able to show, that although that was new, that 
 the party who got the patent was not the man whose in- 
 genuity first discovered it^ that he got it from A. or B., or 
 took it from a book that was printed in England, and 
 which "was open to all the world then, althougli the pub- 
 lic had the benefit of it, it would become an important 
 question whether he was the first and true inventor." 
 And in Walton y. Potter, (f) Sir N. O.Tindal, 0. J., said: 
 "Though the matter may not have been used, the party 
 is not entitled to his patent unless he is the &s,t ^d true 
 inventor; therefore, if the subject matter of the patent 
 ^ has been discojered, has been published in a dictionary, 
 'tor example, though it has not been reduced into prac- 
 tice, if a man merely adopts it, the merit is so small, that 
 his patent for it would be worth nothing." 
 
 In the course of the argument in the case of The 
 
 (a) 1 Webs. P. R. 72. M. & W. 300 ; 1 Webs. P. R. 
 
 (J) 2 M. & W. 554 i 1 Webs. 543. ' 
 P. R. 190. (e) 1 Webs. P. R. 507. 
 
 (c) 2 H. Bl. 470. (/) 1 Webs. P. R. 592. 
 
 {d) See Carpenter v. Smith, 9 
 
OF LETTERS PATENT. l3 
 
 BouseMll Oo. V. N6ilson,{a) Lord Lyndhurst observed: Chap. hi. 
 ",If tlie machine is published in a book^ distinctly and 
 clearly described, corresponding with the description in 
 the s pecification of the patent, though it has never been'?' 
 actually worked, is not that an answer to the patent ? It 
 4 continually the practice on trials for patents to read 
 out of printed work:s, without reference to what has been 
 ^ done." And Lord Brougham added : " It negatives 
 I 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 uxJBnglandi.' ■ 
 
 In a case before Lord Romilly, M. R., his lordship said 
 that it would make no difference that the book was in a 
 foreign langiikge, if it was expose d Jfor sale. It does 
 not appear, however, from the report, that the case of The 
 Sousehill Oo. v. N&ilson was cited in argument. (6) 
 
 Where the book has never been circulated, and has Secus, if book 
 
 ii-iio'i ■ 1 1 1 ''*® ^°^ been 
 
 been lost sight oi, it becomes a question whether there circulated, 
 has been such a publication as to invalidate a patent. 
 "If the invention," said Sir N. C. Tindal, 0. J., "has ' 
 already been made public in England, by a description 
 contained in a book, whether written or printed, which 
 has been publicly circulated, in such a case the patentee is 
 not the first and true inventor within the meaning of the 
 statute, whether he has himself borrowed his invention from 
 such publication or not ; because the public cannot be pre- 
 cluded from the right of using such information as they 
 were already possessed of at the time the patent was 
 granted. It is obvious that the application of this prin- 
 ciple must depend upon the particular circumstances 
 
 (a) 1 Webs. P. R. 718 n. (b) Langy, Gishome, 31 Beav. 133. 
 
14 
 
 THE SUBJECT MATTEE 
 
 Chap. III. 
 
 Publication in 
 a book is an 
 objection, not 
 merely evi- 
 dence of objec- 
 tion. 
 
 Sale of book 
 not necessary. 
 
 Publication in 
 a, specification 
 vitiates subse- 
 quent patent, 
 
 wMcli are brought to be^r upon each, particular case. 
 The existence of a single copy of a workj though printed, 
 brought from a depository 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 __eyidence , there has been such a 
 publication as to make the description a part of the public 
 stock of information ?"{a) 
 
 Publication in a book which has been exposed for sale 
 is an objection to the validity of the patent, not merely 
 evidence of an objection. " I think,'' said Maule, J., " it 
 is an objection, to the patent, and not evidence simply of 
 an objection that there has been a previftus patent and 
 a specification enrolled, and therefore published being 
 enrolled, containing the invention. In the same way, I 
 think it is an objection to a patertt that it has been pub- 
 lished in such a book." (&) 
 
 It is not necessary to establish the fact that a single 
 copy of the book has been sold — the publication is com- 
 plete as soon as the book is exposed for sale in the 
 bookseller's shop. («) 
 
 If an invention has been described in a s pecification , a 
 subsequent patent for a similar invention will be void ; 
 but in certain cases when the invention has been abaadoned 
 it has been held that a subsequent patent was not void, {d) 
 and by 5 & 6 WiE. IV. c. 83, s. 2, provision is made for con- 
 firming letters patent granted to a bondfde inventor who 
 
 (a) Stead V. Williams, 8 Scott 
 (N. R.) 472 ; 2 Webs. P. K. 142 ; 
 Steady. Anderson, 2 Webs. P. R. 
 150. 
 
 (6) Jones v. Berger, 6 Scott 
 
 (N. R.) 219; 1 Webs. P. R. 
 550. 
 
 (c) Lang V. Gisbome, 31 
 Beav. 133. 
 
 (d) Bee post, tit. Experiments. 
 
OF LETTBES PATENT. 15 
 
 discovers tHat h.is invention has already been described, (a) ■ Chap. ill. 
 The general rule is^ however, that if prior to the time of 
 obtaining a patent any part of the substanoei of the in- 
 vention has been commmiicated to the public by a speci- 
 fication of any other patent, or is known, the benefit of a 
 patent cannot be claimed ; (6) and the latter patent will be even if some 
 
 o-in^rPTicfi in. 
 
 void even if there is some difference in the mode of work- mode of work- 
 ing, if the invention is substantially the same. Thus '°^' 
 where a patent was granted for "improvements in the 
 construction of racks and pulleys for window blinds and 
 other useful purposes," which, 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, so as to fix the 
 pulley spindle firmly to the frame ; and it appeared that 
 by a previous patent the same objec t had been effected by 
 a similar method, with the addition merely of a thin piece 
 of metal called an escutcheon which worked outside the 
 frame, but the specification stated that the pulleys might 
 be made without the escutcheon, it was held that the two 
 patents were substantially the same as to one of the things 
 claimed, and that the one first described was void, (c) 
 
 The fact that another Specification for a similar invention 
 has been filed since the date of the plaintiff's patent, but 
 
 (a) See ^os<, chapter on Con- Aid. 542; Forsyth v. Riviere, 
 
 firmation of Letters Patent. 1 Webs. P. E. 97 ; Muntz v. 
 
 (6) Huddart v. Grimshaw, 1 Foster, 2 Webs. P. E. 107. 
 Webs. P. E. 86 ; Hilly. Thomp- (c) Dobbs v. Penn, 3 Exci. 427 ; 
 
 _so», 8 Taunt. 375 ; 1 Webs.P.E. Bmh v. Fox, 5 H. & C. 707; 
 
 244 ; Brunton v. Hawkes, 4 B. & McCormich v. Oray, 7 H. ScN. 26. 
 
16 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 before the latter was filedj is not of itself any proof of 
 want of novelty in the plaintiff's invention, (a) 
 
 In Booth V. Kennard (6) the plaintiff's patent^ obtained 
 in 1852, for improvements in the manufacture of gas, was 
 described in the specification to " consist in the direct use 
 of seeds, leaves, flowers, branches, nuts, fruit, and other 
 substances and matters containing oil or oily or resinous 
 matter," and the mode of using the materials, it was stated, 
 might be the same as the apparatus used in tfie ordinary 
 mode of making gas from coal. The claim was in these 
 words : " I claim for making gas direct from seeds and 
 matters herein named for practical illumiaation or useful 
 purposes, instead of making it from the oils, resius, or 
 gums previously extracted from such substances ." A patent 
 obtained in 1829 was given in evidence by the defendant, 
 in which the inventor proposed to use fatty substances 
 such- as greases or grains; also the residuum after the 
 oil had been expressed from seeds such as oil cake ; also 
 beech nuts, mast, cocoa nuts, and other matters abounding 
 in oil, and it was held that the latter specification showed 
 that the making gas direct from seeds and other oily- 
 matters was not new at the date of the plaintiff's patent 
 and that it was therefore void, (e) 
 Specification A Specification of a patent does not differ from any 
 
 fromany'^o'ther °^^^^ publication of an invention for the purpose of in- 
 piibhcation. yalidatiag a subsequent patent for want of novelty ; (c?) it 
 may describe the process to be adopted so insufficiently 
 as to invalidate the patent and yet disclose enough to 
 
 (a) Cornish v. Keene, 1 Webs. 
 P. K. 519. 
 
 (6) 2 H. & K 84. 
 
 (c) See also Hullett v. Haguef- 
 3 B. & Ad. 370 ; Muntz v. Fos-. 
 
 ter, 2 Webs. P. R. 92 ; Allen v. 
 Rawson, 10. B. 551. 
 
 id) Hills V. Hvans, 4 D. G. F. 
 & J. 288 ; 8 Jut. (N. S.) 529. 
 
OF LETTEES PATENT. 17 
 
 f 
 show that what is claimed by a subsequent patent is Chap. hi. 
 
 not new. {a) 
 
 If a patentee files a provisional specification which he Publication in 
 abandons, and afterwards files another provisional specifi- ^pec^ration. 
 cation before the time for provisional protection has 
 expired, the abandonment itself will not be a pubHca- 
 tion. (6) 
 
 r,' The amount of information given by a prior publication Amount of in-"^ j 
 in order to avoid a subsequent patent, must be_ equal to bT^uaUo'thatr 
 that required to be given by a specification and must be Tsp^^ficatTni)] 
 enough to enable the public to carry the invention into 
 practical use. (c) > 
 
 In Hills V. Evans [d) Lord Westbury said : " The ante- 
 cedent statement must be such that a person of ordinary 
 knowledge of the subject would at once perceive, 
 understand, and be able practically to apply the dis- 
 covery without the necessity of making further experi- 
 ments and gaining further information before the inven- 
 tion can be made useful. If something remains to be" 
 ascert ained which is necessary for the useful application 
 of the discovery, that affords sufficient room for another 
 valid patent. By the words of the statute of James it is" 
 necessary for the validity of a patent that the invention 
 should not have been known, or used at the time. These 
 words are held to mean, ' not publicly known or publicly 
 used.' What amounts to public knowledge or pubUc 
 use is still to be ascertained. One of the means of 
 imparting knowledge to the public is the publication of a 
 
 (a) Belts V. Neilson, L. R. 3 577 ; Lewis \. Marling, 10 B. 8t 
 
 01.429. 0^52; 4 C. & P. ,52; 1 Webs. 
 
 " (S) Oxley T. Holden, 8 C. B. P.JR^ 490. 
 (N. S.) 660. (d) 4 De G. F. & J. 300 ; 8 
 
 (c) Young T, Fernie, 4 Giff. Jur. (N. S.) 529. 
 
18 
 
 THE SUBJECT MATTEE 
 
 Chap. III. 
 
 General de- ' 
 soription not 
 vitiate subse- 
 quent patent. 
 
 Antecedent 
 publication 
 must enable 
 public to use, 
 lUTention. 
 
 /book or the recording of a specification of a patent. If, 
 therefore, in disproving that allegation which is involved 
 in every patent that the invention was not previously- 
 known, appeal be made to an antecedently published 
 book or specification, the question is what is the nature 
 and extent of the information thus acquired which is 
 necessary to disprove the novelty of the subsequent 
 
 -patent ? ^ There is not I think any other general answer 
 that can be given to this question than this, that the 
 information (as to the alleged invention given by the 
 prior publicatio^must for the purpose of practical utility 
 
 -be equal to that given by the subsequent patent. The 
 invention must be shown to have been before made 
 
 -^oiown. 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." And in Betts v. Meneies{a) his 
 - lordship said, " A barren general description, probably 
 containing some suggested information or involving some 
 speculative theory, cannot be considered as anticipating, 
 and as therefore avoiding for want of novelty, a subsequent 
 specification or invention which involves a practical truth "^ 
 productive of beneficial results, unless you ascertain that / 
 the antecedent publication involves the same amount of 
 practical information." 
 
 The amount of information must be such as to enable 
 the public to use the invention, if not with infallible 
 success, at least with certainty, {&) and the novelty of a 
 patent will not be impeached by proof that a patent for 
 a similar invention has been taken out many years pre- 
 
 (a) 10 H. & C. 154. (J) Betts v. Neilson, L. K. 3 Ch. 435. 
 
OB" LETTERS PATENT. 19 
 
 viously, if it can be shown ttat the object of the second )chap. ill. 
 could not have been obtained by the first even with the » 
 assistance of subsequent knowledge and improved ma- 
 chinery, (a) 
 
 If an alleged discovery is made, but is not claimed, and 
 no article is made according to it, it is a strong argument 
 that the alleged discoverer has not been able to make the 
 principle available for general use, (&) and any person who 
 subsequently discovers a practical method of using such 
 principle will be entitled to a patent, (c) 
 
 No valid patent can be granted for an invention which Public user of 
 has been publicly used and generally known, that is to vitiates subse- 
 say, known to the public generally, or at least to that "^"^"^ ^* ^" ' 
 portion of the public whose attention is turned to such mat- 
 ters, even though the user is unknown to the patentee, (d) 
 A very slight amount of user is enough to vitiate a patent, 
 provided that it is public. Thus, where a patent "was 
 taken out for a process of bleaching, and the great utility 
 of the invention and the fact that the process was not 
 known to bleachers was proved ; but it was shown that 
 another person had used the same process for five or six 
 years anterior to the date of the plaintifis' patent and had 
 kept his method secret from all but his two partners and 
 two servants employed in working the process. Lord 
 Bllenborough non-suited the plaintiff on the groimd of 
 previous user, (e) In Cornish v. Keene (/) Sir N. C. Tindal 
 
 (a) Muntz t. Foster, 2 Webs. 345 ; Stevens v. Keating, 2^xch. 
 
 P. R. 93 ; Betts v. De Vitre, 11 ^^iWeBs^TTTiriglf JfcCor- 
 
 L. T. (N. S.) 445 ; Neilson v. mickx-- Gray, 7_H^& N,-,26, 
 Betts, L. R. 5 H. & I. (i^) Stead-f. Anderson,2W &hs, 
 
 (6) Minter v. Mower, 1 Webs. P. R. 149. 
 P. R. 139 ; Mqrgan v. Seaward, (e) Tennanfs Case, Dav. P. C. 
 
 1 Webs. P. R. 186. 429 ; 1 Webs. P. K. 125, n. 
 
 (c) R. V. TOeeZer, 2 B._&^Ald. (/) 1 Webs. P. R. 508. 
 
20 
 
 THE SUBJECT MATTER 
 
 Public user is 
 user in public. 
 
 Chap. III. ( ^^^^1 : " The main question is whetlier this invention was 
 
 \j or was not in use in England at the time of grant- 
 
 (^ ing these letters patent ; was it or was it not in the 
 langua.ge of the Act of Parliament, such a manufac- 
 ture (which has a very wide and extended meaning 
 you may almost caU it invention) ; was it or was it not 
 such an invention at the time of making the letters 
 patent as was current in use ? If it was at the time these 
 letters patent were granted in any degree of general use ; 
 ,' if it was known at aH to the world ju hlicly 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." 
 
 The pubHc user and exercise of an invention means 
 a user and exercise in public, not by the public, such a 
 user as to come to the knowledge of others than the 
 inventor as contradistinguished from the user of it by 
 himself in private. Thus where the plaintiff was the 
 inventor of a new lock, and it was proved that a similar 
 lock had been used on a gate adjoining the public road 
 for several years, and also that several dozens of the locks 
 had been made in England and sent abroad without any 
 secresy, it was held that this was such a public user and 
 exercise of the invention as to avoid the patent, (o) 
 User need not It is not nccessary that the user should come down to 
 date^of patent, t^e time when the patent was granted. (&) In the case of 
 T%e Househill Iron Go. v. Neilson, (c) Lord Lyndhurst said : 
 " If it is proved distinctly that a machine of the same 
 kind was in existence and was in public use, that is, if 
 Use or if trials had been made of it in the eye and in the 
 
 (a) Carpenter y. Smith, 9 M. & 
 W. 300 ; 1 Webs. P. R. 543. 
 
 (b) Ibid. 
 
 (c) 9 C. & F. 788 ; 1 Webs. 
 P. R. 709. 
 
OF LBTTEES PATENT, 21 
 
 presence of the publicj it is not necessary that it should Chap. hi. 
 come down to the time when the patent was granted. If 
 it was discontinued, still that is sufficient evidence in 
 support of the prior use so as to invalidate the letters 
 
 patent I never heard it before questioned that 
 
 the notorious public use of an invention before the 
 granting of the letters patent, though it may have been 
 discontinued, is sufficient to invalidate the letters patent." 
 
 General user in public must however be distinguished General user 
 from experiments and trials kept secret by the inventor guishe/^m 
 or experiments abandoned as useless, (a) experiments. 
 
 But if a person who has made a discovery does not If invention 
 publish it, a subsequent patent for the same invention will subsequent' 
 not be void. In order to constitute such publication as vftiated!" 
 wUl defeat a subsequent patent, there must have been 
 some user of the invention, some steps must have been 
 taken to make it known. In Boulton v. Bull, (&) the case 
 of Dollond's patent was referred to and BuUer, J., said : 
 " The objection to Dollond's patent was that he was not the 
 inventor of the new method of making object glasses. 
 But it was holden that as Dr. Hall had confined it to his 
 closet and the public were not acquainted with it, DoUond 
 was to be considered as the inventor." 
 
 In Hill V. Thompson, {c) Dallas, J., said: "It is not 
 enough to have discovered what was unknown to others, 
 if the discovery be confined to the knowledge of the party 
 having made it ; but it must have been communicated 
 more or less, it must have been more or less made use of 
 so as to constitute discovery as applied to subjects of this 
 sort," and the learned judge referred to Dollond's case 
 
 (a) Seepost, title experiments. (c) 8 Tatint. 382 ; 2 B. Moore, 
 
 (b) 2 H. Bl. 47Q. 433 ; 1 Webs. P. R. 244. 
 
22 THE SUBJECT MATTER 
 
 Chap. III. and Tennant's case (a) as illustrating the distinction be- 
 " tween public user and user in private. (6) 
 
 In Lems v. Marling, {c) Bayley, J.j said : "IfT make 
 a discovery and am entitled to produce an effect from my 
 own experience, judgment and skiU, it is no objection 
 that some one else has made a similar discovery by his 
 mind unless it becomes public. So if I introduce a dis- 
 covery bona fide made, I 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 
 his machine." 
 
 And in Garpenteir v. Smith, {S) a case which turned 
 entirely on the question of public user. Lord Abinger, 
 0. B., said : " What is meant by public use 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 variety 
 of inventions if they are not brought into actual use, 
 ought not to stand in the way of other men equally 
 ingenious who may afterwards make the same inventions 
 and apply them. A great many patents have been 
 taken out, for example, upon suggestions made in a very 
 celebrated work by the Marquis of Worcester, and many 
 ingenious patents have been derived from hints and 
 speculations by that ingenious author. But yet as he 
 never acted on them, as he never brought out any 
 
 (a) Dav. P. C. 429 ; 1 Webs. (c) 4 C. & P. 57 ; 10 B. & C. 
 
 P. R. 125, n. 22 ; 1 Webs. P. R. 497. 
 
 (6) ^esiho Smith -^.Davidson, (d) 1 Webs. P. R. 534." 
 
 19 Dec. of Ct. of Sess. 2iid 
 series, p. 691. 
 
OF LETTERS PATENT. 23 
 
 macMnes whatsoever, those patents are good, so that the Chap. ill. 
 meaning of the words ' public use ' is this, that a man 
 shall not by his own private invention which he keeps 
 locked up in his own breast, or in his own desk, and 
 never communicates, take away the right that another 
 man has for the same invention.^' On a motion for a new 
 trial on the ground of misdirection, the Court of Exche- 
 quer refused to grant a rule, and agreed with law as thus 
 laid down by Lord Abinger. (a) 
 
 In Betts v. Menzies, (b) Sir W. P. Wood, V.C, said : " If 
 "a man sits down and takes out a patent from his own con- 
 jectures without ever having tried the experiment set 
 forth in it, that will not invalidate a subsequent patent 
 taken out and practically worked, especially when it 
 tm'ns out that the method prescribed by the earlier 
 patent is practically useless," and His Honour referred to 
 the Marquis of Worcester's book, and the valid patents 
 taken out from hints contained in it. 
 
 The accidental user of a piece of machinery forming Accidental 
 part or the whole of a mechanical contrivance, which may maoIiinery''not 
 be applied afterwards to some ulterior purpose without '^'■^^^^ patent ; 
 any intention of producing the result, is not such a user 
 of the invention as to prevent a patent from being taken 
 out by another person, who afterwards discovers that the 
 contrivance may be attended with beneficial results, and 
 hona, fide invents a means of carrying it into effect, (c) nor accidental 
 
 .. ffi-i-,. combination of 
 
 And if in a patent for a combmation ot materials, it is materials; 
 
 (a) S. C 9 M. & W. 300; 1 (c) Rarwood v. Great Northern 
 
 Webs. P. K. 541. See also Railway Co., 2 B. & S. 209; 
 
 Gibson V. Brand, 4 Scott (N. K.) S. C. nom. Harrison v. Great 
 
 879 ; 4 M. & Gr. 198 ; 1 Webs. Northern Railway Co., 6 Jur. 
 
 P. E. 638. (N. S.) 996. 
 
 (6) 3 Jur. (N. S.) 357. 
 
24 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 nor use of 
 method or 
 principle in 
 Ignorance. 
 
 User for pri- 
 vate purposes. 
 
 Manufacture 
 by tile inventor 
 before patent 
 not user if 
 secret. 
 
 shown that they have been accidentally combined before, 
 but not for the purposes for which the patent has been 
 taken out, the patent will not be invalidated, (a) 
 
 The user of a method or principle in a machine in 
 ignorance of the effect which may be produced by a 
 proper adaptation will not vitiate a subsequent patent in 
 which the method or principle is utilised with greater 
 success. (6) 
 
 If the antecedent invention has been used for private 
 purposes only, there will, nevertheless, be such a public 
 user as to defeat a subsequent patent. Thus, where in 
 an action for the infringement of a patent for wood- 
 paving, it was proved on behalf of the defendants that 
 wood-paving had been used in the portico of a private 
 house, it was held that if the mode of making the paving 
 was similar to the plaintiff's, that would be a sufficient 
 user to destroy his patent, though put in a place to which 
 the public had not free access, (c) 
 
 If a patentee makes some of the patented articles 
 before the date of the patent, but does not sell them or 
 expose them for sale, and keeps his invention secret, that 
 will not be such a user as to defeat his patent, (d) 
 
 Where the patentee, a few months before the date of 
 his patent, which was for improvements in the construc- 
 tion of paddle-wheels, caused two pairs of the wheels to 
 be made by an engineer, under an injunction of secresy j 
 which was observed ; on the express ground that he was 
 about to take out a patent, and after the wheels were 
 
 (a) Muntz v. Foster, 2 Webs. 
 P. E. 108. 
 
 (6) Minter v. Mower, 1 Webs. 
 P. R. 140, 142 ; 6 A. & E. 744. 
 
 (c) Steady. TFiWiams, 2 Webs. 
 
 P. R. 130 ; Stead v. Anderso7i, 
 2 Webs. P. R. 149. 
 
 (d) Bramahv. HardcastlejUoh 
 81 ; 1 Webs. P. R. 44, n. ; Betts 
 v. Menzies, 5 Jur. (N. S.) 1164. 
 
OF LETTERS PATENT. 25 
 
 made, they were taken to pieces, and sent abroad, and Chap. hi. 
 used, after the patent was taken out, in foreign steam- 
 boats belonging to a company of which the patentee was 
 manager, it was held that this transaction could not 
 be considered as a user by others, or a public user within 
 the meaning of the statute, (a) 
 
 But if the patentee makes the patented article and sells Unless sale. 
 it in the public market before the date of the patent, the . 
 patent will be void, (6) and it appears that if an inventor 
 were to make the article and sell it, and keep the process 
 secret, he would not afterwards be able to take out a 
 patent.' The point, however, has not been expressly 
 decided, (c) 
 
 It is sufficient to constitute public user if the article Manufacture 
 
 has been manufactured openly and not for the purpose of sons before 
 , / j\ patent con- 
 
 expenment. {d) ^iitutes user. 
 
 Where in a patent for improvements in the manufac- 
 ture of iron and steel, which consisted in making steel by 
 applying a combination of carbon and manganese pro- 
 ducing carburet of manganese, it was proved that five 
 firms of ironmasters had used a similar process by which 
 a perfect manufactured article was produced for 
 profit in large quantities, it was held that this was 
 not a mere experiment, and that as the process had been 
 used openly by three of the firms there was such a user 
 as to avoid the subsequent patent, (e) 
 
 (a) Morgan v. Seaward, 2 M. (c) Heath v. Smith, 3 El. & 
 
 & W. 544; M. & H. 56; 1 Bl. 271. 
 
 Webs. P. R. 187. And see {d) Betts v. Neilson, L. K. 3 
 
 Smith V. Dickinson, 3 Bos. & Ch. 429. 
 
 Pul. 630, and 15 & 16 Vict. (e) Heath v. Smith, 3 El. & 
 
 c. 83, s. 10, as to fraud. Bl. 270. 
 
 (V) Wood V. Zimmer, Holt (N. 
 P.) 60 ; 1 Webs. P. K. 44. 
 
26 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 Exposing for 
 sale is user 
 though no sale 
 effected. 
 
 Experiments 
 by inventor 
 not user. 
 
 Must he in 
 private. 
 
 The publicly making and exposing am article for sale, 
 though there is no demand or use for it, will vitiate a 
 subsequent patent ; (a) and it is not necessary to show 
 that any sale has been effected. (&) 
 
 Where in an action for infringement of a patent it was 
 proved that the defendants had made articles of the same 
 description before the plaintiff's patent was taken out, 
 that they had no shop for the exhibition of goods, and 
 that the articles had been deposited for sale in their 
 warehouse, it was held that there was sufficient evidence 
 of user to defeat the plaintiff's claim to novelty in the 
 invention, (c) 
 
 An inventor is entitled to make experiments, to test the 
 sufficiency of his invention, and experiments conducted for 
 that purpose only, in private, will not constitute such a 
 user of the invention as to deprive him of his right to a 
 patent, (d) 
 
 If an invention has already been ascertained by pre- 
 vious experiment to be useful, the inventor's public user of 
 it for profit is a gift of the invention to the public, and 
 avoids a subsequent patent ; but a user before the patent, 
 merely experimental and tentative, does not avoid it. (e) 
 
 Where a machine was invented during the progress of 
 some public works, on which the inventor was engaged, 
 and was tested in a place accessible to the public for four 
 months during the progress of the works, it was held that 
 such user amounted to a dedication to the public, and an 
 
 (a) Losh V. Hague, 1 Webs. 
 P. E. 205. 
 
 (6) Mvllins ^.Hart, 3 C. & K. 
 297 ; Oxley v. Holden, 8 C. B. 
 QS. S.) 666; Betts v. Neilson, 
 L. R. 3 Ch. 429. 
 
 (c) Mullins Y. Hart, 3 C. & 
 K. 297. 
 
 (d) Br amah v. Hardcastle, 
 Hoi. 81 ; 1 Webs. P. E. 44, n. 
 
 (e) Re Newall and Elliott, 4 
 C. B. QS. S.) 294. 
 
OF LETTERS PATENT. 27 
 
 application for a patent was refused. Lord Cranwortli Chap. III. 
 said : " The petitioner admits he completed his invention ~ 
 
 in May, 1855, and that he used it publicly for upwards of 
 four months before applying for the patent. No doubt 
 an experiment might have been made ; and if made lona 
 fde only for the purpose of testing the merits of an inven- 
 tion, I do not think it would have amounted to a dedica- 
 tion to the public; but where, as in the present case, 
 thousands of persons had the opportunity of seeing the 
 apparatus at work for a period of four months, during the 
 carrying on of the petitioner's contract, and in the regular 
 course of the undertaking, it is quite clear that no inten- 
 tion of applying for a patent originally existed; and 
 under such circumstances, and after the lapse of such a 
 time, I must hold that there was a dedication to the pub- 
 lic, and refuse the application." {a) 
 
 But a necessary and unavoidable disclosure to the Unless dis- 
 pubHc, if it be only made in the course of mere experi- avoidable, 
 ments, is no publication ; although the same disclosure, if 
 made in the course of a profitable user of an invention 
 previously ascertained to be useful, would be a publica- 
 tion. An experiment performed in the presence of others, 
 which not only turns out to be successful, but actually 
 beneficial in the particular instance, is not necessarily a 
 gift of the invention to the world. Thus, where a person 
 had invented an improved apparatus for laying down 
 submarine telegraphic cables and experiments on dry 
 land were found to be indecisive, and the inventor suc- 
 cessfully used his apparatus in the course of a contract 
 for laying down a cable at sea, and immediately after- 
 wards took out a patent, it was held that there was not 
 
 (a) Adamson's Patent, 6 D. M. G. 420. 
 
28 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 Unsuccessful 
 experiments 
 by a previous 
 inrentbr will 
 not vitiate a 
 subsequent 
 patent. 
 
 such, a publication as to prevent him from obtaining a 
 , patent, (a) 
 
 Where the inventor of a carding-machine lent it to a 
 person in order to test itj and the machine was used in a 
 room in a mill where men were constantly going back- 
 wards and forwards, it was held that this was not such a 
 user of the invention as to deprive the inventor of his 
 right to a patent. (&) 
 
 If an experiment towards an invention is made, and 
 fails, and is abandoned, the invention of a subsequent in- 
 ventor, who in effect remedies the defects in the first 
 invention, though he has never seen it, will not be vitiated 
 by the previous user. Thus, where the plaintiff in an 
 action for infringement had taken out a patent for wheels 
 constructed on the suspensio n prindple, and for the de- 
 fence it was shown that previously to the date of the 
 patent a Mr. Strutt had made wheels on the same prin- 
 ciple, Patteson, J., in summing up, said : " If, on the 
 whole of this evidence, either on the one side or the 
 other, it appeared that this wheel constructed by Mr. 
 Strutt' s orders was a wheel on the same principle, and in 
 substance the same wheel as the other for which the 
 plaintiff has taken out his patent, and that it was used 
 openly in public, so that everybody 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 plaintiff's invention is not new, and if it 
 is not new, of course his patent is bad, and he cannot 
 recover in his action ; but if, on the other hand, you are 
 of opinion that Mr. Strutt's wheel was an experiment, and 
 
 (a) Re Newall and Elliott, 4 
 C. B. (N. S.) 295. 
 
 (J) Bentley v. Fleming, 1 C. & 
 K. 587. 
 
OP LETTERS PATENT. 29 
 
 that he found it did not answer, and ceased to use it alto- j Chap. III. 
 gether, and abandoned it as useless, and nobody else fol- 
 lowed it up, and that the plaintiff's invention 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 that the plain- 
 tiffs patent is not good, it depends entirely upon what 
 is your opinion upon the evidence with respect to 
 that." (a) 
 
 Where a patent was taken out in 1818 for the applica- 
 tion of a rotary cutter in shearing cloth from list to Hst, 
 it was proved that in 1811 a specification in which the 
 principle was stated was brought over from America and 
 a machine commenced but never finished, that in 1816 a 
 model of such a machine was brought over and though no 
 machine was made from it, the model was shown to several 
 persons, that the Americaninvention was in fact useless,and 
 that the persons who had the model of it bought and used 
 machines made by the plaintiffs, — Lord Tenterden, C.J., 
 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 this kingdom. If it were shown 
 that the plaintifis had borrowed from some one else, then 
 of course their patent would fail .... 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, (b) 
 
 (a) Jmes v. Pearce, 1 Webs. (6) Lewis v. Marling, 4 Car. 
 
 P. R. 122. & P. 52 ; 1 Webs. P. R. 490. 
 
30 THE SUBJECT MATTER 
 
 Chap. III. In Carpenter v. Smith, (a) Alderson, B., said that Lewis 
 
 V. Marling went to the very extreme point of the law; and 
 in Morgan y. Seawa/rd{b) the same learned judge said that 
 he should have entertained very considerable doubt as to 
 whether there had not been a publication of the inven- 
 tion. 
 
 Both Jones v. Pearce and Lends v. Marling appearj 
 however^ to have been decided on the ground that the 
 former machines were mere experiments, which totally 
 failed, and in Murray v. Clayton (c) Sir W. M. James, L. J., 
 said : " I am not aware of any principle or authority upon 
 which the exhibition of a useless machine which turns out 
 a failure can be held to affect the right of a patentee who 
 has made a successful machine, although there may be a 
 degree of similarity between some of the details of the 
 two machines," and referred to the ruling of Patteson, 
 J., in Jones v. Pearce. 
 
 The following cases support the proposition that an 
 unsuccessful experiment will not vitiate a subsequent 
 patent for a similar invention. 
 
 In Calloway v. Bleaden [d) Sir N. C. Tiadal, C. J., said : 
 " A mere experiment or a mere course of experiments 
 for the purpose of producing a result which is not brought 
 to its completion, but begins and ends in uncertain ex- 
 periments, that is not such an invention as wiU prevent 
 another person, who is more successful or perseveres with 
 greater energy in the line that has been laid out for him 
 by the preceding iaventor, from availing himself of it 
 and having the benefit of it." 
 
 (a) 9 M. & W. 300 ; 1 Webs. (c) L. R. 7 Ck 581. 
 
 P- B- 543. (d) 1 Webs. P. K. 525. 
 
 (b) 2 M. & W. 553 ; 1 Webs. 
 P. E. 190. 
 
OF LETTBES PATENT. 31 
 
 In The Househill Oo. v. Neilson, (a.) Lord Lyndhurst said Chap. hi. 
 that their Lordships must not be understood to have given 
 any decision as to the case of an invention which had been 
 formerly used and abandoned many years ago, and the 
 whole thing lost sight of. 
 
 In Stead v. Williams (6) Cresswellj J., said : " I take it 
 that there is a great difference between the knowledge of an 
 invention as a thing that would answer and was in use, 
 and the knowledge of it as a mere experiment 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 re-introducing it may within the meaning of this 
 Act be the inventor and the first user of it so as to justify 
 a patent." 
 
 ^ And in Hills v. The London Gas Light Co., (c) Sir G. 
 W. Bramwell, B., said : " If there has been a user of an 
 invention, not of a substantial character but in the cKarac- 
 
 |,ter of an experiment, then although the thing has been 
 done before, it does not preclude a person from taking 
 out a patent for it." 
 
 It must be shown that the article made before answered The former 
 the purposes and had the properties of that which the have hS'the 
 patentee has made and claims as his invention, and also tf^as'th^V' 
 that it was known and used, [d) Thus where it is proved claimed by the 
 that there was an invention in existence before the patent 
 was taken out which has never been properly completed so 
 
 (a) 9 C. & F. 816 ; 1 Webs. (c) 5 H. & N". 312. 
 
 P. R. 717. (d) Walton v. Safeman, 1 
 
 (6) 2 Webs. P. K. 135. Webs. P. R. 617. 
 
32 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 ExMbitionB of 
 new inTentiona 
 at interna- 
 tional exhi- 
 bitions not to 
 prejudice pa- 
 tent rights. 
 
 The question 
 of user is for 
 the jury to 
 decide. 
 
 as to have any practical effect, and which, if it had appeared 
 after the patent, would hare been held to be a colourable 
 imitation, the subsequent patent will not be inYaHdated..(a) 
 
 It is "difficult lo distinguish, accurately where the use 
 of an invention for the mere purpose of experiment stops, 
 and the employment or user of it as a completed inven- 
 tion which the inventor thinks cannot be made more 
 perfect begins, and the test seems to be, has the inventor 
 used the invention for the purpose of making a profit by 
 it in trade ? (&) 
 
 By 33 and 34 Vict. c. 27, s. 2, it is provided that the 
 exhibition shall not, nor shall the publication during the 
 period of the holding of such exhibition of any description 
 of such invention, nor shall the user of such invention 
 within the place where the same may be held, nor shall 
 the user of such invention elsewhere by any person with- 
 out the priority and consent of the true and first inventor 
 thereof, prejudice the right of the exhibitor thereof, he 
 being the true and first^inventor, within six months from 
 the time of the opening of such exhibition, to obtain 
 letters patent for his invention. 
 
 The question of public user is a question of fact which 
 it is for the jury to decide, (c) The question whether or 
 not the manufacture was in public use in England before 
 the date of the patent, or whether the evidence only shows 
 that experiments have been made which have been aban- 
 doned, is one of considerable delicacy ; a slight alteration 
 in the efi'ect of the evidence will establish either the one 
 proposition or the other, and the only proper mode of 
 
 (a) Daw V. l!ley, L. R. 3 Eq. 
 496 ; Murray v. Clayton, L. R. 
 7 Ch. 585. 
 
 (6) Lang v. Oishome, 31 
 Beav. 135. 
 
 (c) Elliott V. Aston, 1 Webs. 
 P. R. 224. 
 
OF LETTERS PATENT. 33 
 
 deciding it is to leave to the jtiry ; and if they hear the .Chap. iir. 
 evidence patiently, and apply it with intelligence, their ~ ~ 
 verdict will not be disturbed, (a) 
 
 A machine does not cease to be the subject of a Dela;jrin, 
 patent merely because of the length of time during 
 which the inventor may keep it by him after it has been, 
 made a complete invention, (6) 
 
 An inventor wiU not be permitted to shelter himself Wilfol igno- 
 under wilful ignorance, but wiU be fixed with knowledge 
 not only of what he did know, but of what he would 
 have known if he had made the inquiries, which it is 
 incumbent on him to make, (c) 
 
 The meaning of the word "manufacture" has often What is a new 
 been discussed. ((^) In the case of Boulton v. Bull,{e) 
 Eyre, C. J., said: '^ According to the letter of the 
 statute- the saving goes only to the sole working and 
 making; the sole buying, selling and using remain 
 under the general prohibition. It was admitted that the 
 word manufacture in the statute was of extensive signi- 
 fication, that it applied not only to things made, but to ThjDgs made, 
 the practice of making; to principles carried iato 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 compositions 
 of things, such as manufactures in the most ordinary 
 sense of the word ; secondly, all mechanical inventions, 
 
 (a) PerSirN. C. Tindal, C. J., (c) Westrupp and Gibbins' 
 
 in Cornish v. Keene, 4 Scott, Patent, 1 Webs. P. R. 555 ; Honi- 
 
 352 ; 3 Bing. (N. C.) 588 ; 1 baWs Patent, 9 Moo. P. C. C. 
 
 ■Webs. P. E. 519; Walton v. 390. 
 Bateman, 1 Webs. P. R. 619. (d) See Webster on Subject 
 
 ~(b) Bentley t. Fleming, 1 C. & Matter, p. 98. 
 K. 587. (e) 2 H. Bl. 492. 
 
34 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 Practice of 
 
 making. 
 
 Manufacture 
 means either 
 the machine 
 or mode of ii 
 constructing i ' 
 it. 
 
 Amount of 
 invention im- 
 material. 
 
 ■Whether made to produce old or new effects, for a new 
 piece of meclianism is certainly a thing made. Under 
 the practice of making, we may class all new artificial 
 manners of operating with the hand or with instruments 
 in common use, new processes in any art producing 
 effects useful to the public." 
 
 In B. V. Wheeler, {a) Abbott, 0. J., said "that the word 
 'manufacture' had generally been understood to mean 
 either a thing made or some part of an engine or instru- 
 ment to be employed in making some previously known 
 article or in some other useful purpose." 
 
 " The word ' manufacture ' in the statute," said 
 'Parke, B., ''must be construed in one of two ways; it 
 mJEiy mean the machine when completed, or the mode of 
 constructing the machine .'^'(6) In Ralston v. Smith, {c) it 
 was said that it is not every useful discovery that can be 
 made the subject of a patent, but that the words "new 
 manufacture" will com.prehend not only a production, 
 but the means of producing it, and in Bush v. Fox,{d) 
 Coleridge, J., said: "Manufacture includes both pro- 
 cess and result." 
 
 The ^amount of labour and thought bestowed, or ex- 
 penditure of money, is immaterial in considering 
 whether or not a patent should be granted, for inven- 
 tions are of various kinds, sometimes they are the 
 result of study, sometimes of accident, (e) 
 
 It was objected in Crane v. Price,{f) that the quality 
 
 (a) 2 B. & Aid. 349. 
 
 (6) Morgan v. Seaward, 2 M. 
 &W.558; M.&H. 58; 1 Webs. 
 P. K. 193. 
 
 (c) 11 H. & C. 223. 
 
 (i) Macr. 176. 
 
 (e) Liardet v. Johnson, Bull 
 (N. P.) 76; 1 Webs. P. R. 
 53. 
 
 (/) 4 M. &G. 604; 5 Scott 
 (N. R.) 390; 1 Webs. P. R. 
 410. 
 
or LETTERS PATENT, 35 
 
 or degree of invention was so small, that it could not Chap. hi. 
 become the subject matter of a patent, but Sir N. C. 
 Tindal, 0. J., said that in point of law the labour of 
 thought or experiments, and the expenditure of money, 
 are not the essential grounds of consideration on which 
 the question, whether the invention is or is not the subject 
 matter of a patent ought to depend, for if the inven- 
 tion is new and useful to the public, it is not material 
 whether it is the result of long experiments and profound 
 research, or of some sudden and lucky thought, or mere 
 accidental discovery. Where the invention consisted in 
 the manufacture of tubes without the use of a maundril, 
 so as to weld them without hammering them on any 
 solid surface, " though that seems to be a very simple 
 invention,'' said Lord Lyndhurst, " it has been produc- 
 tive of great' advantages, inasmuch as it has enabled 
 the manufacturer to construct pipes for gas and other 
 purposes very correctly, and also of lengths much be- 
 yond what , could be done previously to this dis- 
 covery." (a) 
 
 In the case of Lems v. Davis, {b) the amount of inven- 
 tion was very small, but the patent was supported. The 
 patent was for a machine to shear from list to list,, by 
 means of rotary cutters. Before the patent the shearing 
 of cloth from list to list by means of shears was known, 
 and the shearing it from end to end, by means of rotary 
 cutters, was also known. Lord Tenterden said: '^If, 
 before the plaintiff's patent, the cutting from list to list, 
 and the doing that by means of rotary cutters, were not 
 combined, I am of opinion that this is such an invention 
 
 (a) Russell V. Cowley, 1 Webs. (6) 1 Webs. P. K. 488. 
 
 P. K. 467 ; 1 C. M. & K. 875. 
 
36 THE SUBJECT MATTER 
 
 Chap. III. by the plaintiffs as will entitle them to maintain the 
 present action.'^ 
 Mode or pro- It was at one time considered doubtful whether a mode, 
 facturing apart or procGss of producing a result, apart from the thing 
 pro^ucedfs produced could be the subject of a patent. The point 
 matto'for^a' ^^^ ^^^ actually decided until the case of Orcme v. Price, (a) 
 patent. ^^^ £^ ]^g^^ previously been discussed in several cases, and 
 
 the received opinion was that such a patent would be 
 valid. In BouUon Y.Bull,{b) Eyre, 0. Jj, said: "When 
 the effect produced is some new substance or composi- 
 tion of things, it should seem that the privilege of the 
 sole working or making ought to be for such new sub- 
 stance 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 composition of things, the patent can only be for the 
 mechanism, if new mechanism is used, or for the process, 
 if it be for a new method of operating, with or without 
 old mechanism by which the effect is produced." His 
 lordship then referred to the case of Hartley's patent, 
 where the invention consisted in the method of applying 
 iron plates to secure buildings from fire, and to a Kst of 
 patents with which he had been furnished, where there 
 were several for new methods of manufacturing articles 
 in common use, and said that he thought these 
 methods might be said to be new manufactures. His 
 lordship then proceeded, " The patent" (which was for a 
 method of lessening the consumption of steam and fuel 
 in fire engines) " cannot be for the effect produced, for it 
 
 (a) 4 M. & G. 602 ; 5 Seott (6) 2 H. Bl. 493. 
 
 (N.R.) 388 ; 1 Webs. P. R. 409. 
 
OE lETTBES PATENT. 
 
 37 
 
 is either no substance at all, or, wliat is exactly the same Chap. III. 
 thing as the question upon a patent, no new substance, ~ 
 
 but an old one produced advantageously for the public. 
 It cannot be for the mechanism, for there is no new 
 mechanism employed, it must then be for the method, 
 and I would say in the very significant words of Lord 
 Mansfield in the great case of the copyright, it must be 
 for method detached from aU physical existence whatever.'' 
 In B, V. Whe6ler,{a) Abbott, C. J., said that the word 
 ''manufacture" might extend '' to a new process to be 
 carried on by known implements or elements acting 
 upon known substances and ultimately producing them 
 in a cheaper or more expeditious manner, or of a better 
 or more useful kind." 
 
 In Hall V. Boot, (6) the patent was for applying the / 
 flame of gas to singe off the superfluous fibres of lace where 
 the flame of oil had been used before for the same pur- 
 pose, and the patent was supported. 
 
 In Losh V. Hague, [c) the patent was for the" use of an 
 old wheel on railways. Lord Abinger, 0. B., referring 
 to the above case, said that that was the application of 
 a new contrivance to an old object and was good, but 
 that applying a new contrivance to an old object and 
 applying an old contrivance to a new object were different 
 things, {d) In Gibson v. Brand, (e) the jury specially found 
 that the alleged invention was not new or a new combi- 
 nation, but that it was an improved process. Sir N. C. 
 Tindal, 0. J., said that it was not necessary to go into 
 the question, whether or not a patent could be supported 
 
 (a) 2 B. & Aid. 350. 
 -(6) 1 Webs. P. K. 100. 
 
 (c) 2 Webs. P. K. 207. 
 
 (d) See also Stevens v. Keating, 
 
 2 Webs. P. E. 183; Curtis v. 
 Piatt, 11 L.T. (S. S.)245. 
 
 (e) 4 M. & Gr. 199; 4 Scott 
 (N.K.)1879; 1 Webs. P. K. 633. 
 
38 THE SUBJECT MATTBE 
 
 Chap. III. for a process only, and that if the specification were pro- 
 "" perly prepared it might probably be considered a fit sub- 
 
 ject for a patent, and in support of his opinion cited the 
 remarks of Eyre, 0. J., and Abbott, C. J., noted above. 
 
 Shortly after the decision in Gibson v. Brand the case 
 of Grame v. Price (a) came before the same court, when the 
 question as to whether there could be a patent for a 
 process was faUy discussed. The patent was " for an 
 improvement in the manufacture of iron." The specifi- 
 cation described the subject of the invention to be the 
 application of anthracite or stone coal, combined with hot 
 air blast, in the smelting or manufacture of iron from iron- 
 stone mine or ore. It was distinctly stated that the 
 patentee did not claim the use of a hot-air blast separately 
 as his invention, when uncombined with the application 
 of anthracite or stone coal j nor did he claim the appli- 
 cation of anthracite or stone coal when uncombined with 
 the use of hot-air blast ; but that what he did claim as 
 his invention was the application of- anthracite or stone 
 coal and culm, combined with the use of the hot-air blast 
 in the smelting and manufacture of ironstone mine or 
 ore. The question in the suit therefore was whether, 
 admitting the use 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 the cold 
 blast, but that the combination of the two together (the 
 hot-air blast and the anthracite) was not known before 
 in the manufacture of iron, such combination could be 
 the subject of a patent. Sir N. C. Tindal, C. J., in de- 
 livering the judgment of the Court, said : " "We are of 
 
 (o) 5 Scott (N. R.) 388 ; 4 M. & Gr. 602 ; 1 Webs, P. R. 409. 
 
OP LETTERS PATENT. 39 
 
 opinion that if the result produced by such, a combina- Chap. hi. 
 tion is either a new article or a better article or a cheaper 
 article to the public than that produced before by the old 
 method, such cotnbination is an invention or a manufac- 
 ture intended by the statute, and may well become the 
 subject of a patent." 
 
 The decision in Crane v. Price was questioned in 
 Horton v. Mabon, {a) by Willes, J., who said that the only 
 ground on which it could be supported was that the pro- 
 duct was a materially better article, but it has never 
 been overruled. In Murray v. Clayton, Q)) Sir W. M. 
 James, L. J., said : " No doubt Crane 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, 
 however, was simply because I could not see how the 
 word 'combination' could be properly applied to the 
 introduction of a particular 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," and his lordship quoted 
 the judgment of Sir N. C. Tiudal cited above. 
 
 In Stevens v. Keating, {c) Sir F. Pollock, C.B., said: 
 " 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 manufac- 
 ture j of that there cannot be a doubt; and therefore 
 
 <a) 12 C. B. (N. S.) 448. (c) 2 Webs. P. R. 182. 
 
 (6) L. K. r Ch. 584. 
 
40 THE SUBJECT MATTER 
 
 Chap. III. 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 although an old thing, if made 
 in a new way, the very making of it in a new way makes 
 it a manufacture." 
 
 In Newall v. Elliott, (a) the patent was for " improve- 
 ments in apparatus employed in laying down submarine 
 telegraph wires." The specification claimed : " First, 
 coiling the wire or cable round a cone ; secondly, the 
 supports placed cyHndrically outside the coil round the 
 cone; thirdly, the use of the rings in connection with 
 the cone as described." The patent was objected to as 
 being for a mode, but it was held that there was such an 
 improvement as to constitute a good subject matter for 
 a patent. 
 Meaning of " A method of performing a process," said Rooke, J., 
 
 method and " means the mode or manner of effecting. A newly inven- 
 ted method, therefore, means the idea of a new mode of con- 
 struction;" and Heath, J., said that when a mode of doing 
 a thing is referred to something permanent it is properly 
 termed an engine; when to something fugitive, a method. (5) 
 " Engine and method," said Lawrence, J., in Sorn- 
 blower v. Boulton, (c) ''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 con- 
 trivance or device, so may an engine, and therefore I 
 think it may answer the word method. So principle 
 
 (a) 10 Jur. (N. S.) 954 ; 13 (6) Boulton v. Bull, 2 H. Bl. 
 
 W. R. 11. 478, 468. 
 
 (c) 8 T. E. 106. 
 
OF LETTERS PATENT. 41 
 
 may mean a mere elementary truths but it may also mean Chap. hi. 
 constituent parts." 
 
 Though a patent may be granted for a method or No patent can 
 
 process of manufactming anything apart from the thing 
 itself, which is made, nevertheless a patent cannot be 
 granted for a bare principle. 
 
 The leading case on this point is Boulton v. Bull, (a) 
 The patent was for "a, method of lessening the con- 
 sumption of steam and fuel in the fire-engines.'' The 
 specification commenced by saying, " My method of 
 lessening the consumption of steam and consequently 
 fuel in fire-engines consists of the following principles," 
 and then described how they were to be carried into 
 eflfect. The patent was objected to on the ground that 
 a patent could not be granted for a principle. 
 
 The judges differed as to the construction of the speci- 
 fication, but they were all agreed that there could be no 
 patent for a principle. Eooke, J,, said : " The term 
 principle is equivocal, it may denote either the radical 
 elementary truths of a science or those consequential 
 axioms which are founded on radical truths, but which 
 are used as fundamental truths by those who do not find 
 it expedient to have recourse to first principles." Heath, 
 J,, said that the patent must be for the vendible matter 
 and not for the principle, and that it had always been 
 held that the organization of a machine might be the 
 subject of a patent, but that principles could not. Bul- 
 ler, J., said : " 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 
 
 (a) 2 H. BI. 463. 
 
 be granted for 
 a principle 
 only. 
 
42 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 Fhiloaophical 
 or abstract 
 principle 
 cannot be 
 patented. 
 
 But a patent 
 maybe granted 
 for a mode of 
 applying the 
 principle. 
 
 be for some new production from those elements and 
 not for the elements themselres." And Eyre, C. J., said : 
 " Undoubtedly there can be no patent for a mere prin- 
 ciple ; but for a principle so far embodied and connected 
 with corporeal substances as to be in a condition to. act, 
 and to produce effects in any art, trade, mystery, or 
 in manual occupation, I think there may be a patent." 
 Owing to the difference of opinion among the judges 
 as to construction of the specification the case went 
 to the Court of King's Bench, and it was unanimously 
 determined that there could be no patent for a prin- 
 ciple, (a) In the case of B. v. Wheeler, (b) Abbott, C. J., 
 said, " No merely philosophicaj^or abstract principle can 
 answer to the word ' manufacl^ip^.' Something of a> cor- 
 poreal 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 practically his 
 art and skill, is requisite to satisfy this word." (c) 
 
 A patent may, however, be granted for the application 
 of a priuciple to some machine or process. The patent 
 in such a <!ase is not for the principle, but for the mode 
 of carrying it into effect, {d) " You cannot," said Alde]> 
 son, B., "take out a patent for a principle; you may 
 take out a patent for a principle coupled with the mode 
 of carrying it into effect, pro\dded you have not only dis- 
 covered the principle but invented some mode of carrying 
 it into effect." (e) 
 
 (a) Homblower v. Boulton, 8 
 T. E. 95. 
 
 (J) 2 B. & Aid. 350. 
 
 (c) See also Househill Iron 
 Co. V. Neilson, 1 Webs. P. R. 683. 
 
 (d) Boulton V. Bull, 2 H. BI. 
 
 463 ; Crossley v. Potter, Macr. 
 244 ; Walton v. Bateman, 1 Webs . 
 P. R. 620. 
 
 (e) Jupe V. Pratt, 1 Webs. P. 
 R. 146 ; B. v. Cutler, 1 Stark. 
 354 ; Minter v. Mower, 6 A. & 
 
OF LETTEES PATENT. 43 
 
 In Neilson v. Harford (a) the patent was " for the Chap. hi. 
 improved application of air to produce heat in fires, 
 -forges and furnaces where bellows or other blowing 
 apparatus are required/' and the specification described 
 the invention to consist in passing a blast of air from the 
 ordinary bloAving apparatus into an air vessel which, 
 during the continuance of the blast, was to be kept 
 heated to a considerable temperature, and from that 
 vessel by means of a pipe into the furnace. The form 
 of the vessel was stated to be immaterial, and might be 
 adapted to the local circumstances or situation. It was 
 necessary sometimes to use water twires to prevent the 
 pipe from melting. It was contended that the patent 
 was ■^oid as being for a principle, but it was held that 
 the patent was not merely for a principle, but for a 
 principle embodied in a machine. Alderson, B., said : 
 " The blowing apparatus was perfectly well known ; the 
 heating of air was perfectly well known ; the twire was 
 perfectly well known as applicable to blast furnaces ; 
 then what he really discovered is that it would be better 
 for you to apply air heated up to red-heat or nearly so 
 instead of cold air as you have hitherto done.* That 
 is the principle ; that is the real discovery; .but in 
 order to take out a patent you must have an embodiment 
 of the principle, and his embodiment of the principle 
 is the heating of air in a separate vessel intermediately 
 between the blowing apparatus and the point where it 
 enters the furnace. Then he says, ' I do not mean to claim 
 any shape in which it is done ; jt may be done in a vessel 
 of any shape, provided only you have such a vessel of 
 
 E. 735 ; HuUett v. Hague, 2 A. (a) 1 "Webs. P. E. 331. 
 
 & E. 370. 
 
.44 THE SUBJECT MATTER 
 
 Chap. 111. such a shape, a fire so appKed as that in the intermediate 
 . space between the blowing apparatus and the furnace the 
 
 air arrives at the red-heat/ .... I take the distinction 
 between a patent for a principle, and a patent which can 
 be supported, to be, that you must have an embodiment 
 of the principle in some practical mode described in the 
 specification of carrying the principle into actual effect, 
 and then you take out your patent not for the principle 
 but for the mode of carrying the principlb into effect. 
 In Watfs patent, which comes the nearest to the pre- 
 sent of any you can suggest, the real invention of Watt 
 was, that he discovered that by condensing steam in a 
 separate vessel a great saving' of fuel would be eflfected 
 by keeping the steam cylinder as hot as possible, and 
 applying the cooling process to the separate vessel and 
 keeping it as cool as possible, whereas before, the steam 
 was condensed in the same vessel ; but then Mr. Watt 
 carried that practically into effect by describing a mode 
 which would effect the object. The difficulty which 
 presses on my mind here is, that this party has taken 
 out a patent in substance like Watt's for a principle, that 
 is the application of hot air to furnaces, but he has not 
 practically described any mode of carrying it into . effect. 
 If he had perhaps he might have covered aU other modes 
 as being a variation." 
 
 The same patent was the subject of litigation before 
 the Court of Session, i^ the case of The Mousehill Iron 
 Company v. Neilson,(a) and Lord Justice Clerk Hope 
 said : — " It is quite true that a patent caimot be taken 
 out solely for an abstract philosophical principle — for 
 instance, for any law of nature, or any property of 
 
 (a) 1 Webs. P. 11. 683. 
 
OF LBTTEES PATENT. 45 
 
 matter apart from any mode of turning it to accoulit in Chap. ill. 
 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 ia 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 applica- 
 tion of the principle to any practical purpose. And 
 without that aippHcation of the principle 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 principle in science or 
 law of nature, if that principle is by the specification ap- 
 plied to any special purpose, so aa thereby to effectuate a 
 practical result and benefit not previously attained." (a) 
 ''The skill and ingenuity of the inventor,'^ said Lord Skill of in- . 
 Hatherly in Oarmington v. Nuttall, (i) " are shown in the in ajipiication 
 application of principles. Few things come to be known'^ prmcip es. 
 , now in the shape of new principles, but the object of the 
 invention generally is the applying of well known prin- 
 ciples to the achievement of a practical result not yet 
 achieved." And Lord Westbury said : " I may con- 
 struct an apparatus, and may in point of fact make the 
 merit and the benefit of that apparatus depend upon the 
 appUcation of some natural force or property which is 
 perfectly weH known, but my invention consists in the 
 construction of the apparatus in such a manner as to 
 bring the nattfral agency or power to bear upon and 
 
 , (a) And see Dangerfield v. (6) L. R. 5 H. L. 216. 
 
 Jones, 13 L. T. (N.) 142 ; Baxter 
 V. Combe, 1 It. Ch. 284. 
 
46 THE SUBJECT MATTER 
 
 Chap. III. effect the object whicli I desire to effect^ and that I do 
 by means of an apparatus constructed so as to bring into 
 action that natural power. If, for example, I avail 
 myself of the well-known expansive force of steam in 
 order to effect a new object or a more beneficial result, 
 and I introduce that by means of an apparatus con- 
 structed for the purpose of bringing this well-known expan- 
 sive power into utility for my particular purpose, I have 
 no right of invention in the discovery of that expansive 
 power. My_invrati_QiL.jCQiisijts iii the arrang ement o f the 
 apparatus, in order to receive that ordinary and weU- 
 known dynamic agent, and make it a fit instrument for 
 effecting a new result.'" 
 Instances. In Jones v. Pem-ce, (a) the patent was for an improve- 
 
 ment in carriage wheels, and consisted in the application 
 of the suspension principle to their construction. The 
 means of application was described, and the patent was 
 supported. 
 
 In Minter v. Wells, (6) the patent was for " an improve- 
 ment in the constructing, making, and manufacturing of 
 chairs." The specification described the invention to 
 consist " in the appHcation 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." The claim was in the same words. 
 It was objected that the claim was for a principle, and not 
 for any particular mode of applying it, but it was held 
 that the application of a self-adjusting leverage pro- 
 ducing the effect, constituted the machine, and that the 
 patentee claimed that machine and the right to make it 
 by the application of the particular form of self-adjusting 
 
 (a) I Webs. P. R. 121. (J) 1 Webs. P. R. 134 ; 1 C. M. & R. 507. 
 
OF LETTERS PATENT. 47 
 
 leverage. Lord Lyndhurst, 0. B.^ said: "It is not a Chap. III. 
 
 leverage only, but the application of a self-adjusting 
 
 leverage ; and it is not a self-adjusting leverage only, but 
 
 it is a self-adjusting leverage producing a particular 
 
 effect by tlie means of whicli the weight on the seat 
 
 counterbalances the pressure against the back." It was 
 
 said, in argument, that this was nothing more than one 
 
 of the first principles of mechanics, and Parke, B., 
 
 said : " But that not being in combination before, 
 
 cannot that be patented ? It is only for the application 
 
 of a self-adjusting leverage to a chair — cannot he patent 
 
 that ? He claims the combination of the two, no matter 
 
 in what shapes or way you combine them ; but if you 
 
 combine the self-adjusting leverage Which he thus applies 
 
 to the subject of a chair that is an infringement of his 
 
 patent." 
 
 In Hills V. London Qas Light Oompany, {a) it was con- 
 tended that the mere application of hydrated oxides to 
 absorb the sulphuretted hydrogen from coal gas, was not 
 the subject of a patent, as that property of it was pre- 
 viously well known. It was held that the application of 
 the hydrated oxide was the principle, and that 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 
 was to be appHed, the objection might be well founded, 
 but that as the patent said : " I claim it in the manu- 
 facture of gas in the way I have described," and showed 
 how it jnight be used, the objection failed. 
 
 In a patent for " improvements in giving signals and 
 sounding alarums in distant places by means of electric 
 currents transmitted through metallic circuits," one of 
 
 (a) 5 H. & N. 369. 
 
48 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 Particular [ 
 .method can-\, 
 not be ex- 
 I tended becau e 
 ' of common 
 principle. 
 
 the improvements was described as an improvement 
 " whereby a set of combined conducting wires having a 
 voltaic battery, and a set of buttons or finger keys, and 
 also a dial with metallic needles for giving signals, as, 
 well as an apparatus for sending 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; aU 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 a new invention of the 
 patentees. In an action for infringement it was insisted 
 that the giving of duplicate signals at intermediate 
 stations was not the proper subject of a patent, being an 
 idea or principle only, and not a new manufacture. The 
 Court of Common Pleas, however, held that the patentees 
 not only communicated the idea or principle, that dupli- 
 cate signals might be given, but showed how it might be 
 done, and that it was the fit subject of a patent, for 
 though it might be probable a priori that a circuit 
 having a distant coil could have an intermediate one also 
 which would operate in the same manner, still it was a 
 matter of experiment that it could be practically done, (a) 
 Where a^gatafiSl is not new , any patent taken out for 
 a method of performing the operation wiU be substan- 
 tially Confined to that method, and cannot be extended 
 to other methods obviously difiereiit, because they in- 
 volve some common principle applied to the common 
 object, and may apparently be described by the same 
 general terms, (fc) 
 
 (a) Electric Telegraph Co. v. 
 Brett, 8 C. B. 883. 
 
 (6) Bovill V. Pimm, 11 Bxch. 
 
 739. 
 
OF LETTERS PATENT. 49 
 
 If the specification does not point out the mode by Chap. Ill 
 which the process is to be performedj so as to accomplish jf m^J^Tot 
 the object in view, it will be a statement of a principle po™ted out, 
 
 >> ' r r patent wUl 1 
 
 onlvj and the patent will be invalid. Thus, where a for principle 
 
 . . . . . and invalid. 
 
 patentee stated m his specification the principle of his 
 invention, and that he proposed to unite lead and tin by 
 pressure, but did not give the exact proportions in which 
 they were to be used, nor the mode in which they were 
 to be combined ; and a subsequent patentee specified the 
 proportions of the two metals, gave the details of the 
 mode of working, and did not claim the production of 
 the new "material, except according to the directions 
 given, it was held that as the earlier patent only stated 
 a principle, the latter patent, as it did not claim the 
 discovery of the principle, but only a new mode of 
 carrying it into efifect, was valid, (a) 
 ■"- If the patentee claims a principle to be carried into So if every 
 
 n™ . • 1-1M i' tjt 1- -J? mode of can 
 
 effect m any way m which it can be used, the claim is tor ing piincipi 
 the principle and the patent is. bad. In the course of the Maimed, 
 argument of Neilson v. Harford (6) the plaintiff's counsel 
 said that the" patentee claimed every vessel and every 
 shape of vessel in which air could be heated between the 
 blowing apparatus and the furnace. Alderson, B., said : 
 "" Then. I think that is a principle, if you claim every 
 shape. If you claim a specific shape and ggjtot he jury 
 and say that which oJ^Lgrjp^opleJmve^adoptedjs a c^^ 
 ableTmitation^Jihen I can^ understand jt. If you claim 
 every shape you claim a principle. There is no difference 
 between a principle to be carried into effect in any way 
 
 (a) BeUs V. Menzies, 10 H. & (J) 1 Webs. P. R. 355. 
 
 C. 117; Bovill V. Keyworth, 7 
 EL&Bl. 735. . 
 
 E 
 
50 
 
 THE SUBJECT MATTEK 
 
 Chap. III. 
 
 Additions to 
 and improve- 
 ments on ma- 
 chines good 
 subject matter 
 for a patent. 
 
 you -will and claiming the principle itself; you must 
 detail some specific mode of doing it. Then, the rest is a 
 question for the jury." But it is not necessary to claim 
 every mode which will succeed so long as some mode is 
 pointed out. See the remarks of Lord Abinger in the 
 same case^ p. 356. 
 
 There was formerly a doubt as to whether there could 
 be a patent for an addition to an old manufacture. This 
 doubt rested entirely on Bi/raoVs case, {a) where Lord Coke 
 held that there could not be such a patent ; but in Boulton 
 V. Bull,{b) Byre, C. J., said that the principle on which it 
 was decided had not been adhered to; and BuHer, 3., 
 said : " What were the particular facts of that case we are 
 not informed, and there seems to me to be more quaint- 
 ness than solidity in the reason assigned, which is, that 
 it was but to put 'a new button to an old coat, and it is 
 much 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, the arts and sciences at that period were at so low 
 an ebb in comparison with that point to which they have 
 since advanced, and the efPect and.utility of improvements 
 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. Brcmsom (c) it was decided that an addition 
 to an old stocking frame was the subject of a patent. 
 
 (a) 3 Inst. 184. 
 (J) 2 B:. B1. 463. 
 
 (c) BuU(N.P.)76c.; 1 Webs 
 P. R. 51. 
 
OF LETTERS PATENT. 51 
 
 Lord Mansfield saying that the objection, that there could Chap. III. 
 not be a patent for an addition, would if valid go to ~ 
 
 repeal almost every patent that was ever granted. And 
 in Hornilower v. Boulton, (a) Grose, J., said that if Bircot's 
 case were law it would set aside many patents for very 
 ingenious inventions in cases where the additions to 
 manufactures before . existing are much more valuable 
 than the original manufactures themselves, and that Lord 
 Coke's opinion seemed to have been formed without due 
 consideration, and was not well founded. The addition Addition or 
 
 r> 1 IT improvement 
 
 or improvement must be new and of benefit to the public, must be new 
 The law on this point was thus laid down by. Buller, J., in jo the public. 
 B. V. Arhwright : (&) " 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 wiU be sufiScient to support a 
 patent." 
 
 If it appears that any part of the invention which- is Patent void if ' 
 claimed as an improvement is not so, the patent will be as new is not 
 void as the Crown is deceived in the grant, (c) In Morgan deceived in 
 V. Seaward (d) Parke, B., in considering this point said: ^'^^'^^' 
 " Upon the authorities we feel bound to hold that the 
 patent is void upon the ground of fraud on the Crown, 
 without entering into the question whether the utility of 
 each and every part of the invention is essential to a 
 patent where such utility is not suggested in the patent 
 itself as the ground of the grant. That a false suggestion 
 of the grantee avoids an ordinary grant of lands or tene- 
 ments from the Crown is a maxim, of the Common Law, 
 
 (a) 8 T. K. 104. (d) 2 M. & W. 561 ; M. & H. 
 
 (6) 1 Webs. P. E. 71. 60 ; 1 Webs. P. R. 196. 
 
 (c) Losh V. Hague, 1 Webs. , 
 P. R. 208. 
 
52 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 Claim for. im- 
 provements 
 valid though 
 discoveries 
 made since 
 claim. 
 
 and such a grant is void not against the Crown merely, 
 but in a suit against a third person. It is on the same 
 principle that a patent for two or more inventions when 
 one is not new is void altogether, as was held in Hill v. 
 Thompson (a) and Brunton v. Hcmkes, (b) for although the 
 statute invalidates a patent for want of novelty, and con- 
 sequently by force of the statute the patent woidd be void 
 so 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 of 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 is maintainable upon it. (c) 
 
 The claim to a patent for invention is not affected by 
 the circumstance that by subsequent discoveries improve- 
 ments have been made which lead to results being ob- - 
 tained which could not be obtained by the orig;inal 
 invention. Where the plaintiff's invention was described 
 both in the title and in the specification as consisting in 
 " improvements in giving signals and sounding alarums 
 in distant places by means 5f electric currents transmitted 
 through metallic circuits," and it was subsequently dis- 
 covered by the defendant that the circuit need not be 
 continuously metallic, but that the earth might be used 
 as a connecting medium, it was contended in an action 
 for infringement that the words " metallic circuit " would 
 mislead a person who was in possession of improvements 
 identical with those of the plaintiff, but which he in- 
 tended to use in giving signals by non-metallic circuits. 
 
 (a) 2 B. Moo. 424 ; 8 Taunt. 
 ■ 375 ; 1 Webs. P. K. 237. 
 (6) 4 B. & Aid. 542. 
 (c) Barber v. Grace, 1 Exch. 
 
 339 ; Huddart v. Grimshaw, 1 
 Webs. P. R. 85 ; Heath v. Smith, 
 3 El. & Bl. 256. 
 
0¥ LETTERS PATENT. 53 
 
 It was heldj however, that the, title did — the earth circuit Chap. hi. 
 not being publicly known — give sufficient notice to any 
 person secretly acquainted with that discovery. In 
 delivering the judgment of the Court of Common Pleas, 
 CressweU, J., 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 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 the improvements 
 claimed, (a) 
 
 A patent for an improvement on an existing patent is Improvement 
 
 ■ on 6xistiii'^ 
 
 valid. (&) In Granev. Price{c) Sir K". C. Tindal, C. J., said patent valid, 
 that upon reason and principle there did not appear to be 
 any objection to such a patent, the new patent after the ex- 
 piration of the old one would be free from every objection, 
 and while the former existed the new one could be legally 
 used by the public by procuring a licence from the original' 
 patentee or by purchasing the apparatus from him or 
 some of his aigents. {d) 
 
 But if the improvBiments cannot-be used without the 
 machine, for, which the first patent has been granted, the 
 patentees must wait until the original term has expired, (e) 
 
 It is a question for the jury to decide whether the im- value of im- 
 provement 
 
 (a) Electric Telegraph Co. v. (c) 1 Webs. P. R. 413. 
 
 Brett, 10 C. B. 881. (d) See Lister \. Leather, ,8 
 
 (6) Hill V. Thompson, 3 Mer. El. & Bl. 1017. 
 629 ; 1 Webs. P. K. 237 ; Bovill (e) Ex parte Fox, 1 V. & B. 
 
 y. Moore, 2 Marsh. 211 ; Lewis 67 ; Lewis v. Davis, 3 0. & P. 
 
 V. Davis, 3 C. & P. 502 ; Harmar 502 ; Fox v. DellestabU, 15 W. 
 
 V. Playne, 11 East, 101. E,. 194. 
 
 question for 
 jury. 
 
54 THE SUBJECT MATTEE 
 
 Chap. III. provements claimed are trifling and insignificant and not 
 worth a patent, (a) 
 
 A patent may be granted for a combination of machinery 
 combination of or substanccs, all of which were known and in use pre- 
 
 known articles ., .... t/>it 
 
 in new manner viously SO long as the comDination IS newj and nseiui. In 
 Boulton V. Bull, (6) BuUer, 3., said that it is no objection 
 to a patent for a mechanical or chemical discovery that 
 the articles of which it is composed were known and were 
 in use before^ provided the compound article which is the 
 object of the invention is new. (c) 
 
 " There are," said Lord EUenborough, " common ele- 
 mentary materials to work with in machinery^ but it is the 
 adoption of those materials to the execution of any par- 
 ticular purpose that constitutes the invention ; and if the 
 application 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 inven- 
 tion which protected by the king's patent ought to con- 
 tinue to the person the sole right of vending." (d) 
 
 Where the patent was for "^ an improvement or improve- 
 ments in the making or manufacture of elastic goods or 
 fabrics applicable to various useful purposes," and the in- 
 vention consisted in the use of elastic threads or strands 
 of India rubber covered with filaments wound round them, 
 with yarns of cotton or other non-elastic materials placed 
 alternately side by side as a warp and combining them 
 
 (a) Losh V. Hague, 1 Webs. Moore, 2 Marsh. 2U ; Hill v. 
 
 P- K. 205. Thompson, 8 Mer. 629 ; ,1 Webs. 
 
 (S) 2 H. Bl. 487. P. R. 237 ; Berosne v. Fairie, 
 
 (c) See alsb Lukie v. Rohson, ih. 154 ; Oamble v. Kurtz, 3 
 2 Jur. 201. C. B. 425 ; Sateman v. Gray. 
 
 (d) Huddart v. Grimshaw, 1 1 C. L. K. 514; Cannington v. 
 Webs. P. R. 86 ; Bovill v. Nuttall, L. R. 5 H. L. 205. 
 
OP LETTERS PATENT. 55 
 
 by means of a weft, wten in extreme tension and deprived Chap. hi. 
 
 of their elasticity, so that a -cloth was produced in which 
 
 the non-elastic threads formed a limit up to which the 
 
 elastic threads might be stretched, but beyond which they 
 
 could not be stretched and therefore could not be easily 
 
 broken, and the materials were old; but the jury found that 
 
 the combination was new, the patent was supported, {a) 
 
 In Bovill-Y. Keyworth(h) the specification of a patent 
 for improvements in manufacturing wheat and other grain 
 into flour, claimed as the invention exhausting the dusty 
 air when the same had been blown through the grinding 
 surfaces of the mill stones from the chambers receiving 
 the meal, by means of a blast of air. This invention 
 consisted of the combination of a blast and an exhaust, 
 both of which had been used separately in mills, and it 
 was held to be the subject of a patent. 
 
 " li," said Lord Westbury, " a combination of ma- • 
 chinery for effecting certain results has previously existed, 
 and is well known, and an improvement is afterwards dis- 
 covered, consisting for example cif the introduction of. 
 some new parts, or an altered arrangement in some par- 
 ticulars of the existing constituent parts of the machine, 
 an improved arrangement or improved combination may 
 be patented.'^ (c) 
 
 A patent may be granted for a machine formed by the 
 mere arrangement of common elementary mechanical ma- 
 terials, even if it produce no other results than have been 
 previously accomplished by other mechanical arrange- 
 ments and construction, if it appears that the results ob- 
 
 (a) Cornish v. Keene, 4 Scott, (6) 7 El. & Bl. 725. 
 
 337; 3 Bing. (N. C.) 588; 1 (c) Foxwell v. Bostock, 12 W, 
 
 Webs. P. K. 517. And see Car- R. 725. 
 pentery. Smith, 1 Webs. P. R. 538. 
 
56 THE SUBJECT MATTEE 
 
 Chap. III. tained are produced with greater expedition and economy, 
 and are of a better quality, (a) 
 
 The discovery of a property in a combination of known 
 articles for useful purposes may be the subject of a patent. 
 Thus the discovery that the combination of copper and zinc 
 of a certain quality in specified proportions for the pur- 
 pose of making an alloy, which combination would be de- 
 feated by the introduction of any foreign ingredients, was 
 held to be a good subject matter for a patent. (6) 
 Combination A patent for a combination is not a claim that each part 
 
 does not claim . . - ^ 
 
 each part as of it is new, but On the contrary each part may be old, 
 and yet a new and useful combination of such old parts' 
 may be valid, (c) 
 
 A valid patent for a process gives protection to each 
 
 part that is new and material for the process without any 
 
 express claim of particular parts, and although the parts 
 
 - of the combination are old. (d) 
 
 Combination A patent may be granted for a combination of, old and 
 
 of things partly . 
 
 old and jMrtly new machinery, (e) 
 
 Test of norelty • ^^ Order to test whether a part of a combination for 
 of combina- which a patent is taken out is new, it ought to be con- 
 sidered whether a patent could be granted for the part by 
 itself. (/) 
 
 And in order to discover whether the whole invention 
 is new the proper mode is to take the specification alto- 
 
 (a) Murray v. Clayton, L. R. Bl. 1023 ; Parkes v. Stevens, L. R. 
 
 7 Ch. 570. 8 Eq. 367 ; on app., L. R. 5 Ch. 
 
 (S) Muntz v. Foster, 2 Webs. 36. 
 P. R. 93; Walton v. Potter, (e) Sellers v. Dickenson, '5 
 
 "Webs. P. R. 604. Exch. 312; Nekton v. Grand 
 
 (c) Lister v. Leather, 8 El. & Junction Railway Co., ib. 331. 
 
 SI- 1°1^- (/) Parkes v. Stevens, L. R. 
 
 ■(d) Lister v. Leather, 8 El. & 5 Cb. 36. 
 
OF LETTERS PATENT. 57 
 
 getlier, and see whether the matter claimed as a whole is Chap. hi. 
 new. (a) " I take it/' said Lord Hatherley ia Cannmgton 
 V. Nuttall,{h) "that the test of novelty is this: Is the pro- / 
 duct which is the rpsult of the apparatus for which an in- 
 ventor claims letters patent effectively obtained by means 
 of your new apparatus, 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.'' 
 
 A patent cannot be granted for the application of a Application of 
 well known machine to purposes analogous to the purpose ana™|ourpur- 
 to which it has already been applied, unless the mode of Cteriais°ca^- 
 
 application is new. fc) not be patented 
 
 ^ -^ ^ ' unless mode 
 
 In Kay v. Ma/rshall(d) the plaintiff claimed to have in- of application 
 
 new. I 
 
 vented " new and improved machinery' for preparing and 
 spinning flax, hemp, and other fibrous substances by 
 power." The specification, after setting forth and de- 
 scribing the invention and in what manner the same was 
 to be performed, claimed as the invention in respect of 
 new machinery, for preparing fiax, hemp, and other 
 fibrous substances certain macerating vessels, and the 
 trough of water described in the specification; and claimed 
 as the invention in respect of improved machinery for 
 spinning flax, etc., the trough for holding the rovings 
 when taken from the macerating vessels, and placing the 
 retaining rollers and the drawing rollers nearer to each 
 other than they had ever been placed before. It was 
 shown that before the date of the patent fibrous substances 
 
 (a) Newtomr. Grand Junction (c) Zosk v. Hague, 1 Webs. 
 
 Railway Co., 5 Exch. 334. P. R. 208.- 
 
 (6) L. E. 5 H. L. 216. (d) 2 Webs. P. R. 36. 
 
58 , THE SUBJECT MATTER 
 
 Chap. III. had been spun at a shorter reach than two-and-a-half 
 inches, but that it was not known that flax could be spun 
 by means of macerationj as having a short fibre at a reach 
 of two-and-half inches. It was held by the Court of 
 Common Pleas on a case sent by Lord Langdale that 
 there was not such an invention as to support a patent. 
 Sir N. C. Tindal, C. J., said : " Now whether a patent 
 can by law be taken out fbr placing the retaining rollers 
 and the drawing rollers of a spinning machine, which 
 machine itself was known, and in use before, within two 
 inches-and-a-half of each other under the circumstances 
 stated in the case is the real question between the parties, 
 and we think it cannot." The case then went to the 
 House of Lords, where the judgment of the Court of 
 Common Pleas was aflBrmed. Lord Cottenham said, p. 
 82, " that if a man has discovered any means of using a 
 machine which the world has not known before the benefit 
 of, that he has a right to secure to himself by means of a 
 patent, but if the mode was known before, then he cannot 
 deprive the public of having the benefit of that which 
 they enjoyed before." 
 
 In Pow V. Taunton (a) the patent was for the application 
 of a nipping lever to the surface of a wheel for the pur- 
 pose of making it revolve ; and it was held that, though 
 the application of the nipping lever might be new, it must 
 be shown that the means essential for carrying the appli- 
 cation into effect were new also. So in Beg. v. Gutter (h) 
 it was held that the application of iron tubes coated with 
 brass to form the tubular flues of steam boilers could not 
 be supported as, although the application of the tubes was 
 new, neither the tubes themselves nor the mode of apply- 
 ing them was new. 
 
 (a) 9 Jur. 1056. (6) 2 C. & K. 215. 
 
OF LETTBES PATENT. 59 
 
 In Sa/rwood v. The Oreat Northern Eailway Oo., [a) the Chai>. III. 
 patent was for " improvements in fishes and fish, joints ' 
 for connecting the rails of railways." The material part of 
 the specification was as follows : " The fishes are made with 
 a groove or recess in, their outer surfaces, which groove 
 serves to receive the square heads of the bolts, and pre- 
 vent them turning round when the nuts are screwed on or 
 off. "Washers are placed in the groove of the fish, which is 
 next to the nuts, so as to allow of the nuts being turned 
 round j or the fish on this side may be made without the 
 groove. The position of the bolts and nuts may be re- 
 versed if preferred, so that the nut may • be prevented 
 from turning round while the bolt is screwed into it. The 
 gr90ve renders the fish lighter for an equal strength or 
 stronger for an equal weight of metal than a fish which 
 is made of an equal thickness throughout. The top and 
 bottom of each fish is a plane surface, and the parts of the 
 rail with which they come in contact are also plane sur- 
 faces forming the same angle as the top and bottom 
 surfaces of the fish. The fishes are thus made to fit into 
 their places with greater facility than if these surfaces 
 were of curved or irregular forms. If, however, the 
 surfaces of the rails are curved, the fishes may be made 
 to fit them."' 
 
 It was proved that before the date of the patent the 
 rails of railways had been connecte4 by fishes and fish 
 joints, attached to each side of the rails at the joints by 
 means of bolts and nuts, but until the time of the patent, 
 fishes for connecting the rails of railways had never been 
 made with a groove or recess in their outer or lateral 
 surfaces so as to receive the square heads of the bolts. 
 
 (a) 11 H. L. C. 654. 
 
60 THE SUBJECT MATTER 
 
 Chap. III. It was also proTed that double channelled iron had been 
 used for fishing the beams of railway bridges. Lord 
 Westbury, in moving 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 haviag 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 interfer- 
 ence with trade and with the liberty of adopting any 
 mechanical contrivance if every slight difference in the 
 application of a well known thing should be held to 
 constitute ground for a patent. . . There is the familiaar 
 contrivance of the button to the button hole taken from 
 the waistcoat or coat, which may be applied in some 
 particular mechanical combination in which it has not 
 hitherto been applied, to constitute that application the 
 subject of a patent to be granted for a new invention. No 
 sounder doctrine was ever established than .... that you 
 cannot have a patent for a well known mechanical con- 
 trivance, merely when it is applied in a manner or to 
 a purpose which is not quite the same, but is analogous to 
 the manner or to the purpose in or to which it has been 
 hitherto notoriously used. The channelled iron was 
 applied in a manner which was notorious, and the appli- 
 cation 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." 
 
 In Jordan v. Moore, {a) it was decided that the combi- 
 nation of iron and timber in the construction of ships, 
 being already well known and commonly used, a patent 
 
 (a) L. R. 1 C. P. 635. 
 
OF LETTERS PATENT. 61 
 
 for a peculiar combination of those two materials could Chap. III. 
 not be sustained j and in Maekelcan v. M'ewnie, (a) it . " 
 was said by the Courtj, though the point was not 
 expressly decided, that the use of iron instead of tim- 
 ber in the construction of floating docks was not an 
 invention for which a patent could be granted. 
 
 A patent cannot be taken out for the use of a machine Use of old ma- 
 known before, in a manner known before, so_aaJia_gain^ manned Tannof 
 partigTJlaiLadva ntage. jV ) ^^ patented. 
 
 In Tetley v. Easton, (c) the patent was for an invention 
 of " certain improvements in machinery, for raising and 
 impelling water and other liquids." The specification" 
 described the machine, which was a pump working by 
 centrifugal force, and the part of the machine upon 
 which the question arose was thus described : " In the 
 interior of the case gg is placed a hollow wheel having, 
 hollow spokes or radial arms of which qq are two, rr I 
 call a nave, which is hollow ; and ss are two hdUow 
 shafts, one at each side of the wheel." " In reference to 
 the hollow wheel, I do not confine myself to the number 
 or to the use of hollow spokes, but in some cases propose 
 to substitute circular discs with a narrow water channel 
 between, and a valve or flexible valve or valves on the 
 circumference so as to have a channel or channels in the 
 interior thereof for the passage of liquids, and adapted to 
 neutralize the effects of suction by having a correspond- 
 ing or proportionate degree of suction each side." The 
 patentee after disclaiming any exclusive right to wheels 
 when consisting of hollow spokes or of a channel or 
 
 (a) 13 G. B. (N. S.) 61. See (6) Balston v. Smith, 11 H. L. 
 
 Arnold v. Bradbury, L. R. 6 Ch. C. 223. 
 706. (c) 2 C. B. (N. S.) 706. 
 
62 THE SUBJECT MATTER 
 
 Chap. III. channels between discs, when considered apart or separate 
 ■ _ from the machinery described, claimed as his invention 
 
 ". the means of increasing the action of the machine by 
 causing the liquid to enter the wheel on both sides. It 
 was proved that the form of the patentee's wheel was 
 not new and that the plan of admitting water at both 
 sides for the purpose of being projected forward by centri- 
 fugal force was not new, it having been made known 
 by a previous specification of a patent for a similar pur- 
 pose. Cresswell J., said : " It may be true that the 
 plaintifiT first explained the full benefit obtained by so 
 'introducing it^ but the discovery that a particular advan- 
 tage was obtained by the use of a wheel known before, 
 in a manner known before, cannot be called an inven- 
 tion or application to sustain a patent." 
 Norapplica- In. the case of The Patent Bottle Envelope Go. v. 
 
 tion of known Tirr-n -r 
 
 machine and Seymour, (ft) W illes, J., said that the application . of 
 a well known tool to work previously untried materials 
 or to produce new forms is not the subject matter of a 
 patent, and that 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 discovery of the mate- 
 rial or the form into which it is to be worked ; and that 
 such a discovery was not one of a new manufacture 
 within the statute, and that a patent for it alone could 
 not be maintained. When a patent was taken out in 
 the year 1853 for " certain improvements in preparing, 
 dressingj finishing, and winding cotton and linen yarns 
 or threads, and in the machinery connected therewith," 
 the specification of which stated that "the- yarns or 
 
 (a) 5 C. B. (N. S.) 164. 
 
 new material. 
 
OF LETTERS PATENT. 63 
 
 thread to be dressed are wound upon a roller or beam at Chap. hi. 
 one end of the machine, pass through the operation of 
 sizing as in common use, and from thence to the cor- 
 responding beam at the opposite or finishing end of the 
 machine •" and in the year 1856 a patent was taken out 
 for " an improvement in finishing yarns of wool or hair, 
 and in the finishing of woven fabrics or piece goods," 
 a similar process being described by the specification, 
 except that no mention was made of sizing, it was held 
 that sizing was not a part of the process or apparatus 
 patented in 1853, and that the latter patent was void as 
 being for the application of the same machinery to a new 
 material as had already been applied to other material 
 with the same result, (a) • , 
 
 A mere improvement in performing an operation already Mere improre- 
 'well known and long practised cannot be the subject of ing procese 
 a patent. In Brimton v. HawkesQi) the invention con- paten".'''''' 
 sisted in casting the two flukes of an anchor in one piece ; 
 previously the two flukes had been welded to the shank, 
 and the patent was held to be void. " A patent," said 
 Abbott, C. J., " for a machine, each part of which was in 
 use before, but in which the combination of different parts 
 is new and a new result is produced, is good, because 
 there is novelty in the combination. But here the case is 
 perfectly different; formerly three pieces were united 
 together, the plaintiff only unites two ; and if the union 
 of 'those two' had been effected in a mode unknown be- 
 fore, as applied in any degree to sitailar purposes, I should 
 
 (a) Broolt v. Aston, 8 E. & B. Willis v. Davison, 1 N. R. 234 ; 
 
 478 ; affd., 5 Jur. (N. S.) 1025 ; JRushton v. Crawley, L. R. 10 
 
 28 L. J. Q. B. 175. See also Eq. 522. 
 Bush V. Fox, 5 H. & C. 707 ; (6) 4 B. & Aid. 540. 
 
64 THE SUBJECT MATTEE 
 
 Chap. III. have thought it a good grotind for a patent ; but unfor- 
 tuuately the mode was well known and long practised. 
 I think 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." 
 
 In Ormson v. Olwrhe,{a) it was held that casting 
 tubular boilers in one piece, they having previously 
 been made in several pieces, was not the subject of a 
 patent. In Morton v. Mabon^(b) the patentee claimed 
 as his invention the substitution of double angle iron, 
 for two pieces of single angle - iron in the formation 
 of hydraulic cups or points to telescopic gas holders. 
 It was well known that the cups might be made by 
 riveting two pieces of single angle iron to a plate, and 
 it was held that the substitution of double angle iron was 
 not an invention for which a patent could be granted. 
 Willes, J., said : " No doubt a new combination of old 
 machinery or instruments, whereby a new and useful 
 There must be result is obtained, may be the subject of a patent. But 
 
 some inven- . . 
 
 tiori there must be some invention. There is none here. 
 
 By making a thing in one piece instead of as before 
 uniting several pieces together the patentee no doubt 
 effects a considerable saving of labour and expense. The 
 merit is due to the person who first produced the article 
 called double angle iron. That is old and well known, 
 and had long been applied to purposes not dissimilar" to 
 that to which the present plaintiff applies it. The mere 
 fact of its application to gasholders rendering their 
 construction better or cheaper does not constitute a 
 subject matter of a patent." 
 
 (a) 14 C. B. (N. S.) 475. (b) 12 0. B. (N. S.) 437 
 
 aflfd. 16 C. B. (N. S.) 141. 
 
OF LETTERS PATENT. 65 
 
 The invention must consist either in some new com- Chap. hi. 
 bination of old existing materials or else in the discovery ^^ discoverv 
 of something that did not exist before. Thus, in 
 , Thompson v. James, (a) it was held that the substitution 
 of steel for whalebone hoops for distending petticoats 
 was not the subject of a patent. (6) " The use of a new 
 material/' said Sir E. Malins, V. C, '' to produce a 
 known result is not the subject matter of a patent, but 
 there must be some invention, something really new, 
 something more valuable to the public than the simple 
 use of a new material to produce a known article." (c) 
 
 If the new application of any machine or process Kes Some appU- 
 so much out of the track of the former use as not natur- thought arid 
 ally to suggest itself to a person turning his mind to saryf "^°^^' 
 the subject, but to require some application of thought 
 or study; it may be the subject of a patent, {d) 
 
 If the invention is in reality a modification or altera- A real altera- 
 tion of the original idea, and the result produced is new origmal idea 
 and useful, then it appears that a patent may be granted, ZLe^F^ * 
 although the machine or the process is old. Thus in 
 Steiner v. Seald, (e) a known process applied to fresh mad- 
 der, was applied by the patentee to "spent madder," 
 which, before the date of his patent was known to con- 
 tain some colourings matter, but no process was known 
 by which it could be extracted, and it was, consequently 
 thrown away as useless. The result of the invention 
 was to render the " spent madder" valuable. It was held 
 that though the properties of fresh and spent madder 
 
 (a) 32 Beav. 573. (d) Pern v. Bibhy, L. R. 2 Ch. 
 
 (6) And see White v. Toms, 127; HarwoodY. Great Northern 
 
 37 L. J. Ch. 204. Railway Co., 2 B. & S. 208. 
 
 (c) Rushton V. Crawley, Jj. R. (e) 6 Exch. 607. 
 ,10 Eq. 522. 
 
66 THE SUBJECT MATTER 
 
 Chap. III. miglit be the same or might be different, it did not fol- 
 low as a matter of law that the plaintiff's patent was 
 void, but that it was a question for the jury whether the 
 invention was a new manufacture, (a) 
 
 In Newton v. Voucher, {b) the defendant obtained a 
 patent for packing parts of hydraulic engines or machines> 
 or rendering the same fluid tight. The invention con- 
 sisted in the application of soft metal instead of elastic 
 substances, which had been in use before for enabling the 
 axis of the machine to work in a case and to be water, 
 air, and steam tight. Nothing was said as to friction 
 or bearings. After the date of the defendant's patent 
 the plaintiff discovered that when there was pressure 
 upon soft metal, friction was in a great degree 
 diminished, and he took out a patent for the application 
 of this discovery to improvements in the construction of 
 boxes for the axles or axle-trees of locomotive engines 
 or carriages, and for the bearings of machinery in 
 general. It was held that the patent was for a new 
 principle embodied in a new machine, that the applica- 
 tion of the soft metal differed essentially from that of 
 the specification, and that the patent was valid. 
 Change in Where the invention is for a mere process, any change 
 
 cess may be in the Order of the process constitutes a new manufacture, 
 nrntter" ^^"'' Thus, where the invention was the rendering fabrics 
 waterproof, but at the same time leaving them pervious 
 to air by immersing the fabric in a mixture of a solu- 
 tion of alum with carbonate of lime and then in a solution 
 of soap, and it appeared that before the plaintiff's patent 
 a solution of alum and soap was made in which the 
 
 (a) See also Derosne v. Fairie, (ft) 6 Exch. 859. 
 
 1 Webs. P. R. 154. 
 
OF LETTEBS PATENT. 67 
 
 fabric was immeraed, it wa8 held that the plaintiff's Chap. III. 
 
 patent was good, (a) ' So, 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. (6) 
 
 The adaptation of a known substance to a purpose to Adaptation of 
 which it has never before been applied, and the pro- stance to new 
 perties and qualities of which for the purpose of being f^trf a patent" 
 adopted to the particular purpose have never been known 
 or used before, is the subject of a patent. In Walton v. 
 Potter (c) it was held that the adaptation of caoutchouc 
 as a substitute for the fillets or sheets of leather which 
 are commonly used in the construction of cards, for 
 carding wool, cotton, silk and other fibrous substances 
 was a new invention, (d) 
 
 An invention or a discovery by means of which some Omission of 
 
 . . - . part of process 
 
 part of a machine or of a process may be omitted is a may be subject- 
 useful invention, and the subject of a patent, (e) Jn ° P* ®" • 
 Russell V. Oowley,{f) the invention was for the manu- 
 fapture of tubes for gas and other purposes without the 
 • use of a maundril, which had always been previously 
 used, and in Bopth v. K6nnaA-d(J) t\B patent claimed the 
 making gas directly from, seeds and other oleaginous 
 
 (a) Halliwell v. Dearman, 1 4 Scott, 337 ; 3 Bing. (N. C.) 
 
 Webs. P. E. 401. 570 ; 1 Webs. P. R. 517. 
 
 (h) Allen V. Rawson, 1 C. B. (e) Minter v. Mower, 6 A. & 
 
 551. E. 735 ; 1 Webs. P. R. 139. 
 
 (c) 4 Scott (N. E.) 145 ; 3 (/) 1 C. M. & K. 864 ; 1 
 
 M. & Gr. 438 ; 1 Webs. P. R. Webs. P. R. 463. 
 
 604. ig) 1 H..& N. 527. 
 
 (rf) And see Cornish v. Keene, 
 
68 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 New use of 
 old materials. 
 
 A process, 
 which makes 
 a chemical 
 curiosity avail- 
 able for prac- 
 tical purposes, 
 may be pa- 
 tented. I • 1 
 
 substances, instead of making it from oil obtained from 
 those substances, and thus got rid of one process. In 
 both these cases it was held that, assuming the inven- 
 tion to be new the patent could be sustained. In 
 Wallmgton v. Bale, [a) it appeared that in the manu- 
 facture of gelatine before the date of the plaintiff's 
 patent the hides of animals were cut in large pieces 
 and submitted to the action of caustic alkali, or else 
 were reduced to pulp in a mill similar to a paper mill, 
 and that blood was employed for the purpose of puri- 
 fication. The patentee's invention consisted in reducing 
 the hides to thin slices or shavings, so as to retain a 
 texture which could be dealt with mechanically without 
 destroying the fibre, and by this means he avoided the 
 use of acids or alkaHs or blood, and the patent was held 
 to. be good. 
 
 A process by which old materials can be used again in 
 the same manufacture is a good subject for a patent. (&) 
 
 A patent may be taken out for a discovery or an 
 invention by means of which any substance previously 
 known as a chemical curiosity may be supplied to, the 
 public Jorjaseful and economical purposes, (c) 
 
 In Young v. Jferme (3)Tire fi^Feafr was for "improve- 
 ments in the treatment of certain bituminous mineral 
 substances and matters or products therefropi," and the 
 invention consisted in treating bituminous coals in such 
 manner as to obtain an oil containing paraffine (which 
 
 (a) 7 Exch. 888. 
 
 (6) Hills Y. The Liverpool Gas 
 Light Co., 9 Jur. (N. S.) 140 ; 
 mils v. The London Gas Light 
 Co., 3 H. & N. 313 ; Steiner v. 
 Heald, 6 Exch. 607. 
 
 (c) Stevens v. Keating, 2 Webs. 
 P. R. 189 ; Sellers v. Dickinson, 
 5 Exch. 326; Bewley v. Han- 
 cock, 6 D. M. G. 391. 
 
 (d) 4 Giff. 577. 
 
OF LETTEBS PATENT. 69 
 
 was called paraffine oil) and from which oil paraffine was Chap. hi. 
 obtained. The coals which were deemed to be best 
 fitted for this purpose were such as are usually called 
 parrot coal, cannel coal and gas coal, as they yielded, 
 upon distillation at a high temperature, defiant and other 
 highly illuminating gases in considerable quantity. Par- 
 affine was first discovered by Dr. Reichenbach in 1830, 
 and was first obtained from beechwood tar. What first 
 attracted the special attention of chemists was, that par- 
 affine, though a white solid substance, was composed 
 of exactly the same elements in exactly the same pro- 
 portion as defiant gas. It had been supposed by some 
 persons that paraffine might be obtained from certain 
 schists, but the plaintiff's experiments led hitn to con- 
 clude that the proper materials were the cannel and 
 highly bituminous coals. The principle of the plain- 
 tiff's discovery was the degree of heat at which the 
 distfilation was to be carried- on, and this was substan- 
 tially the process patented. It was proved that many 
 practical and manufacturing chemists had been endea- 
 vouring before the plaintiff's patent to manufacture 
 paraffine oils so as to supply the market, but that none, 
 had been successful. 
 
 In a book published by Dr. Reichenbach in 1854 
 occurred the following passage : " So remained- paraffine 
 until this hour, a beautiful item in the collection of 
 chemical preparations, but it has never escaped from the 
 rooms of the scientific man." Sir John Stuart, V.O., said : 
 " Something therefore remained to bfe ascertained in The queatioiL 
 order to the useful application of this article for econo- anything re- 
 mical and commercial purposes. This illustrates the discovered.* 
 important distinction between the discoveries of the 
 merely scientific chemist and of the practical manufacturer 
 
70 
 
 THE SUBJECT MATTER 
 
 Chap. III. 
 
 The law looks 
 to the inventor 
 who supplies 
 useful article. 
 
 Chemical and 
 mechanical 
 inrentions 
 widely differ- 
 ent. 
 
 who invents the means of producing in abundance, 
 suitable for economical and commercial purposes, that 
 which previously existed as a beautiful item in the 
 cabinets of men of science. 
 
 " What the law looks to is the inventor and discoverer 
 who finds out and introduces a manufacture which sup- 
 plies the market for useful and economical purposes with 
 an article which was previously little more than the 
 ornament of a museum. . . . Inventions in mechanics 
 are as widely different from inventions in economical 
 chemistry as the laws and operations of mechanical forces 
 differ from the laws of chemical affinities, and the results 
 'of analysis and experiment in the comparatively infant 
 science of chemistry with its boundless field of undis- 
 covered laws and undiscovered substances." 
 
 In Higgs v. Goodwm (a) it was held that a patent for 
 " 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 pur- 
 poses," by employing hydrate of lime for precipitating 
 the animal and vegetable matter contained in the sewage 
 water, could be supported as a process producing a nBw 
 result, — manure in a particular form.- 
 
 In Mills V. The London Oas Light Go. (6) the patent was 
 for " an improved mode of compressing peat and of 
 manufacturing gas and of obtaining certain substances 
 applicable to purifying the same." It was known before 
 the date of the patent that hydrated oxides of iron would 
 absorb sulphuretted hydrogen; but it was not known 
 that they could be practically used in the purification of 
 coal gas from sulphuretted hydrogen. It was objected 
 that the mere application of the hydrated oxides to absorb 
 (a) El. Bl. & El. 529. (J) 5 H. & N. 312. 
 
OF LETTERS PATENT. 71 
 
 tte sulpliuretted hydrogen from coal gas was not the Chap. hi. 
 
 subject of a patent, as that property of it was previously 
 
 well known, but it was held that as the patentee said 
 
 that he claimed the application in the manufacture of gas 
 
 in the way he had described, and had shown how it 
 
 might be used, the patent was good. 
 
 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 quali- 
 ties, is a good subject matter for a patent, (a) 
 
 There may be several patents having the same object There may be 
 
 . . , , . several patents 
 
 m View SO long as the modes of attaining the object are with the same 
 
 different. (6) ''There can be no doubt whatever," said mustieTif/' 
 
 Sir N. C. Tindal, 0. J., in Walton v. Potter, {c) ''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 j 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. In Palmer v. Wagstaff{d) Sir P. Pollock, 
 
 C. B., said, "If any other person can discover a method 
 
 of producing the same effect by a totally different means, 
 
 he has a right to do so." The invention must be invention 
 
 . . i. J.T. """St be corn- 
 
 complete m itself and not reqmre the use ot another piete., 
 
 person's invention.(e) 
 
 (a) Per Lord Cranworth in (c) 1 Webs. P. R. 591. 
 
 Bewleyv.JIancock,6I>.M.G.S91. (d) 9 Exch. 501. 
 
 (J) Hvddart v. Grimshaw, 1 (e) Woodcroffs Patent, 2 
 
 Webs. P. R. 92. Webs. P. R. 27 
 
72 
 
 THE SUBJECT MATTEB 
 
 Chap. III. 
 
 Noyelty of 
 mvention 
 question for 
 
 In Eulletty. Hague {a) the patent was for "improve- 
 ■~ments in evaporating sugar." Th.e specification described 
 the invention to consist in a method or apparatus by 
 which I am enabled to evaporate liquids and solutions at 
 a low temperature. And my invention and improvement 
 consist in forcing by means of bellows, or any other 
 blowing apparatus, atmospheric or any other air, either 
 in a hot or cold state, through the Hquid or solution 
 subjected to evaporation, and this I do by means of pip es 
 whose extremities reach nearly (or within such distance as 
 may be found most" suitable under peculiar circumstances) 
 to the upper or interior area of the bottom of the pan or 
 boiler containing such liquid or solution, the other ex- 
 tremities of such pipes being connected with larger pipes 
 which communicate with the bellows, or other blowing 
 apparatus, which forces the air into them." A prior 
 specification was proved in which the same object was 
 attained by means of a pipe or^pip es, perforated with a 
 number of small holes, coiled at the bottom of the boiler. 
 ""It was held that though the object of the two patents 
 was the same, the mode of effecting iihe object was dif- 
 ferent J and that as the latter patent was for the mode or 
 apparat us, it was not void because of the prior specifics^ 
 tion. (6) 
 
 The question as to whether an invention is a new 
 manufacture or not is one of fact for the jury, (c) 
 
 (a) 2 B. & Ad. 370. 
 
 (J) And see BooiA v. Xenioard, 
 2 H. & N. 84 ; Seed v. Higgins, 
 8 H. & C. 550 ; LosTi v. Hague, 
 1 Webs. P. R. 207 ; Steiner v. 
 Heald;^ C. & K. 1022 ; 6 Exch. 
 607. 
 
 (c) Losh V. Hague, 1 "Webs. 
 P. K. 207 ; Steiner v. Heald, 6 
 Exph. 607 ; Spencer v. Jack, 11 
 L. T. (N. S.) 242 ; Eaij v. Mar- 
 shall, 5 Bihg. (N. C.) 492; 
 Saunders v. Aston, 3 B. & Ad. 
 881 ; Manton v. Parker, Dav. 
 
OP LETTERS PATENT. 73 
 
 "An invention must not only be new but it must also be Chap. hi. 
 useful. This condition is not imposed by the Statute of „ j,. . , 
 Monopolies (21 Jac. I. c. B, s. 6), which only requires that invention is 
 the invention shall be new, not that it shall be useful ; and 
 if it is proved to be new then the condition imposed by the 
 statute is complied with; (a) but it is a condition required 
 by the common law, for the public have a right to receive 
 a meritorious consideration in return for the protection 
 which the patent claims. (&) " I think," said Ashursty J., 
 " 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 
 advantages which the public derive from the communica- 
 tion of the invention after the expiration of the term for 
 which the patent is granted." (c) 
 
 " A grant of a monopoly," said Parke, B., in Morgan^ 
 V. Seaward, [d) " for an invention which is altogether use- 
 less may well be considered as ' mischievous to the state, 
 to the hurt of trad'e, or generally inconvenient,' 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 any one during the continuance of the monopoly, 
 without obliging the person making use of it to purchase 
 the useless invention ; and on a review of the cases it may 
 
 P. C. 327 ; De la Rue v. Diclin- (6) Boulton v. Bvll, 2 H. Bl. 
 
 son, 7 El. & Bl. 738 ; Hill v. 477. 
 
 London Gas Light Co., 27 L. J. (c) Turner v. Winter, 1 T. R. 
 
 Ex. 60 ; Bush v. Fox, 5 H. L. C. 605 ;' 1 Webs. P. R. 8. 
 
 707. (d) 2M.&W. 562; M.&H. 
 
 (a) Lewis v. Marling, 4 C. & 61 ; 1 Webs. P. R. 197. 
 P. 58 ; 10 B. & C. 27 ; 1 Webs. 
 P. R.497. 
 
74 THE SUBJECT MATTER 
 
 Chap. III. be doubted whether the question of utility is anything 
 more than a compendious mode introduced in compara- 
 tively modern times of deciding the question whether the 
 patent be void under the Statute of Monopolies." 
 
 In B. V. Arhwright, (a) BuUer^ J., said that the question 
 for the jury to consider was whether the improvement 
 for which the. patent was taken out was material or 
 useful ; and in Morgan v. Secmard, (&) Alderson, B., said 
 that if the invention was usefulj it was a subject to be- 
 supported by a patent, and if it was not useful, then it 
 was no subject to be supported. 
 
 In Manton v. Parker, (o) the patent was held to be 
 void, as the utility of the invention i wholly failed, (ci) 
 
 A patent which is taken out merely for the purpose of 
 obstructing subsequent improvements, and to prevent 
 ^the introduction of other inventions adapted to the par- 
 ticular subject to which it is applicable, cannot be sup- 
 ported, (e) 
 Amount of The amount of utility is not to be considered, it ia 
 
 utility; not con- . . „ , . ., . t ■» 
 
 sidered. Sufficient if there is some utility. In Morgan v. Sea- 
 
 ward, (f) Alderson, B., said : " It is not material that the 
 improvement should be great. It is sufficient if there ia 
 an improvement at aU." (g) 
 
 Invention may If the invention ia new and useful on the whole, it is 
 
 fail in uneesen- 
 
 tial particulars. 
 
 (a) 1 Webs. P. R. 73. ter v. Wells, 1 Webs. P. E. 129 ; 
 
 (b) 1 Webs. P. R. 172. Bruntm v. Hawkes, 4 B. & Aid. 
 
 (c) Dav. P. C. 327. 541. 
 
 (d) &ee also Manton V. Manton, (e) Crossley v. Potter, Macr. 
 Dav. P. C. 349 ; Bovill v. Moore, 245. 
 
 ib. 399 ; Huddart v. Grimshaw, (/) 1 Webs. P. R. 172. 
 
 1 Webs. P. R, 85 ; Russell v. (g-) Belts v. Walker, 14 Q. B. 
 
 Cowley, ib. 467; 1 0. M. & R. 374; Steady. Williams, 1 Webs. 
 
 874 ; Hill v. Thompson, 3 Mer. P. R. 134. 
 629 ; 1 Webs. P. R. 237 ; Min- 
 
OF LETTERS PATENT. 75 
 
 no objection, that it fails in some particular, if that haa Chap. iii. 
 not been claimed as essential, (a) and there is no false 
 suggestion. (6) 
 
 Where the patent was for an improved machine for 
 shearing woollen cloths by means of rotary cutters going 
 from list to list, and the plaintiff claimed in his specifica- 
 tion, among other things, the application of a proper 
 substance to brush the cloth, which turned out to be 
 useless, but did not claim it as essential. Lord Tenterden, 
 0. J,, said : " As to the objection on the ground that 
 the application of a brush was claimed as part of the 
 invention, adverting to the specification, it does not 
 appear that the patentee says the brush is an essential 
 part of the machine, although he claims it as an inven- 
 tion. When the plaintiffs applied for the patent, they 
 had made a machine to which the brush was affixed, but 
 before any machine was made for sale, they discovered it 
 to be unnecessary. I agree that if the patentee mentions 
 that as an essential ingredient in the patent article, 
 which is not so, nor even useful, and whereby he mis- 
 leads the public, his patent may be void; but it would be 
 very hard to say that this 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 so. Several of the cases already 
 decided have borne hardly on the patentees, but no case 
 has hitherto gone the length of deciding that such a 
 claim renders a patent void, and I am not disposed to 
 
 (o) Haworth v. Handcastle,-! 316; Huddart\.OrimsJw.w,T>sv. 
 
 Bing. (N. C.) 182 ; 1 Webs. P. P. C. 265. 
 
 R. 480 ; Boulton v. Bull, 2 H. (J) Morgan v. Seaward, 2 M. 
 
 Bl. 498 ; Neilson v. Harford,. 8 & "W. 563. 
 M. & W. 806 ; 1 Webs. P. R. 
 
76 THE SUBJECT MATTES OP LETTERS PATENT. 
 
 Chap. III. 
 
 Question of 
 utility is for 
 the jury to 
 decide. 
 
 make such a precedent." And Bayley, J., said : " Now 
 at the period when this specification was made, the plush 
 (the substance used) 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 instru- 
 ment where something of that kind was always thought 
 material, and I am of opinion that the subsequent dis- 
 covery that the plush was unnecessary is no objection to 
 the validity of the patent. If the party knew that it 
 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 discovery finds out 
 that it is not necessary, I think that it forms no ground 
 of objection." (a) 
 
 It is not necessary that a patent should be so useful 
 as to exclude every othra- means of attslining the same 
 end, it is sufficient, if on any occasion it is useful. (6) 
 
 It is for the jury to decide whether or not the inven- 
 tion is useful, (c) and it is not necessary to prove that 
 the invention has actually been tried and found to 
 answer, but the jury may accept the evidence of scientific 
 persons that such an invention would be useful, (d) The 
 fact of an invention not getting into use is a presumption 
 against its utility, (e) • 
 
 (a) Lewis v. Marling, 4 C. & 
 P. 57 ; 10 B. & C. 22 ; 1 Webs. 
 P. R. 495. 
 
 (J) Tetley y.JEaston, Macr. 63. 
 
 (c) Lewis V. Davis, 3 C. & P. 
 502 ; Bloxam v. JElsee, 1 C. & P. 
 565 ; 6 B. & C. 173 ; Haworth v. 
 
 Hardcastle, 1 Bing. (N. C.) 182 ; 
 1 Webs. P. E. 480; Tetley v. 
 Easton, Macr. 63. 
 
 ((f) Neilson v. Harford, 1 
 Webs. P. R. 316. 
 
 (e) Morgan v. Seaward, 1 
 Webs. P. R. 186. 
 
A 
 
 CHAPTER IV. 
 
 OF THE SPECIFICATION. 
 
 LL letters patent are now granted upon the express Chap. IV. 
 
 condition that they shall be void if the patentee does condition 
 
 not particularly "describe and ascertain the nature of his ™i^*^teS^if 
 
 invention and ia what manner the same is to be per- specification 
 
 ^ not accurate. 
 
 formed, by an instrument in writing, called a speci- 
 fication, and cause the same to be filed in the office for 
 filing specifications within six calendar months, next and 
 immediately after the date of the letters patent, (a) 
 
 It is of the greatest importance that the specification Accuracy im- 
 portant, 
 should give the most ample and accurate description of 
 
 the invention, for the description of the invention is to 
 be taken from it and not from the patent. (6) 
 
 In Morgan v. Seaward, (c) Alderson, B., said : " It is ab- 
 solutely necessary that the patentee should state in his 
 specification not only the nature of his invention but 
 how that invention may be carried into effect ; unless he 
 is required to do that, monopolies could 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 the prohibited ground, and in order 
 that the public may be made acquainted with the means by 
 
 (a) 15 & 16 Vict. c. 83, s. 9. 1 Webs. P. R. 60. 
 
 (i) Arkicright v. Nightingale, (c) 1 Webs. P. R. 173. 
 
78 THE SPECIFICATION. 
 
 Chap. IV. >tHc1i the inTention is to- be carried into effect." (a) AbsQ; 
 Obiectofspe- ]^^ precision is of course not pract icable . (&) The object 
 cificationis to gf the specification is that the invention shall be so de- 
 
 enable public '^ 
 
 to use mven- scribed that after the term has expired the public shall 
 
 tion at expira- 
 tion of term, h&ve the -benefit of it, (c) and the specification must so far 
 
 describe the invention as to enable any person of ordinary 
 
 skill to make the machine or perform the process, (d) In B. 
 
 V. Arhuynght,{e) BuUer, J., said : " 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 taught by it to do the thing for vrhich the patent 
 
 is granted, for the end and meaning of the specification 
 
 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, and unless the discovery 
 
 be true and fair the patent is void ;" and in Liardet v. 
 
 Johnson (f) it was said that one principal question on 
 
 patents is, whether the specification is sufBcient to enable 
 
 others to make it up, for the meaning of it is that others 
 
 may be taught to do the thing for which the patent is 
 
 granted, so that the public may have the benefit of the 
 
 discovery when the term has expired, (g) 
 
 (a) And see Morton \. Mid- (e) 1 Webs. P. R. 66. 
 
 dleton, 1 Dec. of Ct. of Sess. 3rd (/) Bull (N. P.) 76 ; 1 Webs, 
 
 series, 719 ; Thomas v. Welch, P. R. 53. 
 L. R. 1 C. P. 201. (g) See also Newberry v. 
 
 (6) Boulton V. Bull, 2 H. Bl. James, 2 Mer. 446; Hills v. Lon- 
 
 493. don Gaslight Co., 5 H. & N. 340 ; 
 
 (c) Arkwright v. Nightingale, Ralston v. Smith, 9 C. B. (N. S.) 
 
 1 Webs. P. R. 61. 117 ; Holmes v. The London and 
 
 ' (d) Stead v. Williams, 2 Webs. North- Western Railway Co., 
 
 P. R. 135 ; Belts v. Menzies, 8 Macr. 16. 
 El. & Bl. 937. 
 
THE SPECIFICATION. 79 
 
 The specification is the price that the inventor pays Chap. IV. 
 
 for the patent privileges, (a)- Specifi^on 
 
 It must describe the same invention as the patent, (b) ^ PJ'"* P*"^. 
 
 '^ ' ^ ' by inventor for 
 
 and the patent will be void if the inventor attempts by patent. 
 
 , Must describe 
 
 his specification to include matters that are not of his same inyention 
 
 ... as patent, and 
 
 own actual invention. not attempt to 
 
 In Hill v. Thompson, (c) Lord Eldon said : " Not only "rs^nol; of 
 must the invention be new and useful, and the specification Mention! * '"" ' 
 intelligible, but the specification must not attempt to 
 cover more than that which being both a matter of 
 actual discovery and of useful discovery, is the only 
 proper subject for the protection of a patent.'' {d) 
 
 In Campion v. Benyon, (e) a patent was obtained for a 
 " new and improved method of making and manufactur- 
 ing double canvas and sail-cloth, with hemp and flax, or 
 either of them, without any starch whatsoever." The speci- 
 fication described the invention to consist in an improved 
 texture or mode of twisting the threads, to be applied to 
 th-e making of unstarched cloth. It was proved that 
 canvas had been woven without starch before the date 
 of the letters patent, and it was held that the patent was 
 void as being taken out for more than the patentee had 
 really discovered, and in Huddart v. Orimshaw{f) Lord 
 EUenborough said, that if a patentee in stating the means 
 by which the invention is to be used, oversteps his right, 
 and appropriates more than is his own, he cannot avail 
 himself of the benefit of the ptitent. 
 
 (a) Walton v. Potter, 1 Webs. (c) 3 Mer. 626 ; 1 Webs. P. 
 
 P. R. 595 ; Gibson v. Brand, ih. E. 237. 
 
 629; Morgan v. Seaward, ib. . {d) And see Rushton v. Craw- 
 
 173 ; Wood V. Zimmer, Holt (N. ley, L. E. 10 Eq. 527. 
 P.) 60 ; 1 Webs. P. R. 83. (e) 6 B. Moo. -71 ; 3 Bred. & 
 
 (6) See the judgment of Ab- Bing. 5. 
 bott, C. J., in R. V. WheeUr, 2 (/) 1 Webs, P. R. 86. 
 
 B. & Aid. 251. 
 
80 THE SPECIFICATION. 
 
 Chap. IV. The specification must give all the inventor's knowledge 
 
 s ecification *° *^® public, and if the patentee knows a better mode of 
 must give best -yforkinff than that which he gives to the public, the speci- 
 
 mode of work- ° ii-n-nniriT) 
 
 ing known to fication will be void, (a) " A man, said Pollock, C ii., 
 
 the patentee. . , . . , in • ii. i. 
 
 " has no right to patent a prmciple, and then give tne puD- 
 - lie the humblest instrument that can be made from hia prin- 
 ciple, and reserve to himself all the better part of it." (&) 
 "Wliere a substance directed to be used contained foreign 
 matter which was injurious, and the specification did not 
 show any method of removing it, and it was not generally 
 known how it could be removed, the specification was 
 held insufficient, (c) 
 
 The rule was thus laid down by Gibbs, C. J., in Wood 
 V. Zimmer:{cl) "A man who applies for a patent and 
 possesses a mode of carrying on that invention in the 
 most beneficialmanner, must disclose the means of pro- 
 duciug 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 
 Pmission of same Way and with the same advantages. If anything 
 of process bad. that gives an advantageous operation to the thing 
 invented be concealed, the specification is void." In this 
 case the specification described a mode of making verdi- 
 gris, but it appeared that the patentee had been in the 
 habit of clandestinely using aquafortis, by means of which 
 the process wasiastened, and it was held that the speci- 
 
 (a) Walton v. Bateman, 1 (c) Derosne v. Fairie, 2 C. M. 
 
 Webs. P. R. 622. , & R. 476 ; 1 GaJe, 109 ; 1 Webs. 
 
 (h) Tetleyv.Easton,'M.ajar.'JQ. P. R. 157. 
 And see Sturtz v. De la Rue, (d) Holt (N. P.) 60 ; 1 Webs. 
 
 5 Russ. 322 ; 1 Webs. P. R. P. R. 83. 
 83 n. 
 
THE SPECIFICATION. 81 
 
 fication was void. In Lends v. Marling, {a) Bayleyi J.;said, Chap.vIV. 
 " To support a patent it is necessary that the specificatiofi 
 should make a full disclosure to the public. If the 
 patentee suppresses anything, or if he misleads, or if he 
 does not communicate aU he knows, his specification is 
 bad ; but if he makes a full and fair communication, as far ^ T 
 as his knowledge extends, he has done all that is required.''^ J 
 
 In Morgan v. Seaward, (b) Alderson, B., said, "If a 
 patentee is acquainted with any particular mode by which 
 his invention may be most conveniently carried into 
 effect, he ought to state it in his specification," and re- 
 ferred particularly to the case of Liardet v. Johnson, (c) 
 where the patentee omitted what was very necessary for 
 tempering steel, namely rubbing it with tallow ; and Lord 
 Mansfield held the patent to be void on that account. 
 
 Where a patent was taken out for " improvements in 
 floating docks," and it appeared that the construction 
 of floating docks was not novel, but the plaintiff 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, it was held that 
 as there was no mention of iron in the specification, the 
 plaintiff had not complied with the conditions of the 
 letters patent by duly describing the nature of his in- 
 vention, and the manner in which it was to be carried 
 into effect, and that the patent was therefore void, (d) 
 
 But the specification will not be bad if the omission is Omission not^ 
 slight, and goes only to the degree of the benefit con- only to'the"^" i 
 ferred by the invention ; and it will be sufficient if a work- teSfit." 
 
 (a) 4- C. & P. 57 ; 10 B. & C. (c) BuU (N. P.) 76 ; 1 Webs. 
 
 26 ; 1 Webs. P. R. 496. P. R. 53. 
 
 (6) 1 Webs. P. R. 175. (d) Machelcan v.' Rennie, 13 
 
 ^C. B. (N. S.) 59. 
 Q 
 
82 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 Specification 
 bad if unneces- 
 sary matters 
 stated. 
 
 man is able to construct a machine that would be pro^ 
 ductive of some benefit, (a) 
 
 If anything, is stated in the specification as being 
 material which is not so, it will be void, as the considera- 
 tion of the grant has failed in part. (6) 
 
 In Savory v. Price, (c) the patent was " for a method of 
 making a neutral salt or powder possessing all the pro- 
 perties of the medicinal spring at Seidlitz under the 
 name of Seidlitz P«wders." The specification gave 
 recipes for preparing the ingredients to be used, and 
 directed how they were to be mixed. It was proved 
 that the result obtained by following the specification; 
 was new and useful, but it appeared that the ingredients 
 were weU, known, and were sold in chemists' shops before 
 the date of the patent. It was held that the specification 
 could not be supported. Abbot, C. J., said, " It is the 
 duty of a patentee to specify the plainest and most easy 
 way of producing that for which the patent is granted, 
 and to make the public acquainted with the mode which 
 he himself adopts. By reading this specification we are 
 led to suppose a laborious process necessary to the pro- 
 duction of the ingredients; when in feet we inight go to 
 any cheinist^s shop and buy the same things ready made. 
 The public are misled by this specification, which tends to 
 make people believe that an elaborate process is essential 
 to the invention." 
 
 (a) NeilsonY.Har/ordjlWehs. 
 P. R. 322 ; Househill Iron Co. 
 V. Neihon,! Webs. P. E. 695 ; 
 Macnamara v. Huhe, Car. & M. 
 471. 
 
 (6) Huddart v. Grimshaw, 1 
 Webs. P. R. 93; Bloxam v. 
 Elsee, 6 B. & C. 178 ; Hill v. 
 Thompson, 8 Taunt. 401; 2 B. 
 
 Moo. 242 ; 1 Webs. P. E. 244 ; 
 R. V. Arhwright, 1 Webs. P^ R. 
 70, where the ^ecification stated 
 ten different instruments, and it 
 appeared that four only were ne- 
 . cessary. 
 
 (c) Ry. & Moo^ 1 ; I Webs. 
 P. R. 83. 
 
THE SPECIFICATION. 83 
 
 So if a patentee can only make the article specified Chap, iv; 
 with, two or three of the ingredients named, and he 
 has inserted others which will not answer the purpose, 
 the patent will be avoided. Thus, where the specifi- 
 cation directed different kinds of salts to be used, and 
 it appeared that one of them only would produce the ■ 
 required effect, the patent was held to be void, (a) and 
 where the specification directed the use of ''the finest 
 and purest chemical white lead," and it appeared that 
 " no such substance was known in the trade by that name, 
 but that white lead only was known, the specification 
 was held to be bad. (&) 
 
 If the patentee makes the article with cheaper mate- Cheaper ma- 
 rials than those he has named in the specification, al- 
 though the latter wiU 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 from it which he himself does, (c) 
 
 If a whole class of substances are stated as being useful Class of sub- 
 
 stances, some 
 
 and one of them is not, this will mislead and the patent not useful, 
 will he void., (d) 
 
 In Stevens v. Keating, (e) the specification of a patent 
 for " a certain process or method of combining various 
 materials so as to form stuccoes, plasters or cements, 
 and for the manufacture of artificial stones, marbles, anid 
 
 (a) Turner v. Winter, 1 T. K. (c) Turner v. Winter, 1 T. R, 
 
 606 ; 1 Webs. P. R. 80. 606 ; 1 Webs. P. R. 80. , 
 
 (S) Sturtzv. DelaRue,5Russ. (d) Bickfordv. Skewes,l(i.B. 
 322 ; 1 Webs. P. R. 83 n. See 938 ; 1 Webs. P. R. 218 ; Cross- 
 also Derosne v. Fairie, 2 C. M. ley V. Potter, Macr. 246. 
 & R. 476 ; 1 Gale, 109 ; 1 Webs. (e) 2 Exch. 772 ; 2 Webs.P. 
 P. R. 163 ; Lewis v. Marling, R. 192. 
 10 B. &C. 25; 4 C. & P. 67; 
 1 Webs. P. R. 493. 
 
84 THE SPECIFICATION, 
 
 Oh* p. IV. other like substances used for buildings, decorations, or 
 other similar purposes/' described the invention to con- 
 sist in producing certain hard cements of combinations of 
 the powder of gypsum, of powder of limestone, and of 
 the powder of chalk, with other materials, such combina- 
 tions being, when produced according to the patentee's 
 invention (subsequently to their being mixed) submitted 
 to the action of heat. The process or method of making 
 a cement from gypsum was described as consisting in 
 imiting powdered gypsum with alkali (such as best 
 American pearlash) dissolved in water, 'the solution to be 
 neutralized with acid, sulphuric acid being the best for 
 the purpose; keeping' the solution in agitation, and 
 9,dding acid gradually until effervescence ceased. A 
 certain proportion of water was then to be added, varying 
 with the nature of the alkali used, powder was to be 
 added until the mixture was of a consistence suitable to 
 be cast or moulded into bricks or other forms which were 
 to be heated to a red heat in a reverberatory furnace. 
 The method of making cement from^ limestone and chalk 
 did not materially differ from the above process. After 
 describing the manner in which the cement was to be 
 used, the specification concluded by stating that as other 
 alkalies and acids besides those mentioned would answer 
 the purposes of the invention, though not so well as the 
 acid and alkali specifically mentioned, the patentee 
 daimed as his invention the process of mixing the 
 powdered materials, alkalies and acids as described, and 
 subsequently burning them. It was held that the speci- 
 fication was bad, for either the inventor claimed all acids 
 and alkalies, or all. acids and alkalies that would answer 
 the purpose. If the claim were for all acids and alkalies, 
 it was bad, as there were some which would not answer 
 
THE SPECIFICATION. 85 
 
 the purpqse. If for those only which would answer the'' Chap, iv.'' 
 purpose, then it was bad in consequence of not stating 
 those which would answer, and distinguishing them from 
 those which would not. 
 
 Hills r. The London Gas Light Company, (a) is another 
 case to the same effect. A patentee in the specification 
 of a patent dated 1840, after speaking of the use of black 
 oxide of manganese for purifying gas, continued, " The 
 same effect may be produced by the application of the 
 oxide of zinc and the oxide of iron treated precisely in 
 the way above described." It was held that assuming 
 that the patentee meant to claim all oxides of iron 
 for purifying gas, inasmuch as some would not answer, 
 the Court could not say as a measure of law that a patent 
 could not be had by a person who afterwards discovered 
 that precipitated hydrated oxides were those which it 
 was proper to use. 
 
 ButaspecificationwQlnotnecessarilybeavoidedifitcon- Unnecessary 
 tain unnecessary matter, so long as the public are not misled, be treated*^ ' 
 as theunnecessarymattermaybe treated as superfluous. (6) *"^^' "°'^' 
 
 In Lewis V. Marling (c) Parke, B., said that "the patent 
 win not be void because the patentee claims to be the 
 inventor of a certain part of the machine not described as 
 essential, and which turns -out not to be useful.'^ (d) 
 
 It is for the jury to say whether or not any particular Materiality of 
 
 I ■ 1 i_ p i.1 ■ j_' / \ process ques- 
 
 part of the process is a material part oi the invention, (.e) tion for jury. 
 It is not necessary to claim afl. the substances which Not necessary 
 
 <• n • J- -iiii IT to claim all 
 
 Will answer the purpose ot the invention it the pubnc are 
 
 (a) 5 H. & N. 312. (d) See ante, p. 74. 
 
 (J) Soulton y. Bull, 2 H. Bl. (e) Huddart v. Orimshaw, I 
 
 493. Webs. P. R. 94; ^eardv.jE'g'er- 
 
 (c) 10 B. & C. 25 ; 4 C. & P. ton, 8 C. B. 166. 
 57 ; 1 Webs. P. R. 493. 
 
86 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 useful sub- 
 stances if 
 gublic not de- 
 ceived. 
 
 Specification 
 need not Htate 
 exact propor- 
 tions. 
 
 not misled. In Bickford v. Shewes (a) the specification of a 
 patent instrument called " the Miners' Safety Fuse/' after 
 describing the manner in which the case of the instrument 
 was to be made proceeded as foUows : " by means whereof 
 I embrace in the centre of my fuse in a continuous line 
 throughout its whole length a sjnall portion or compressed , 
 cylinder, or rod of gunpowder, or other proper combustible 
 matter prepared in the usual pyrotechnical manner of the 
 fiijework for the discharge of ordnance." In an action for 
 infidnging the patent, it was objected that the patentee 
 had not shown that any other material but common gun- 
 powder had ever been used in the fuse ; or, if introduced, 
 would answer the purpose. The objection that any other 
 material but common gunpowder had ever been used in the 
 fuse was considered to be immaterial, because though other 
 materials not specified but still within the description 
 given would answer the purpose, no ambiguity was 
 opcasioned, nor was the difficulty of hereafter making 
 the instrument increased by the introduction of terms, 
 which imported that the patentee himself had ever used 
 other materials than gunpowder in the construction of 
 the instrument. 
 
 It is ^ot necessary for the patentee to describe the 
 mode of making everything he uses, or to detail known 
 processes, or explain the terms appropriate to the par- 
 ticular art or science or branch of industry to which his 
 invention belongs. (&) 
 
 The specification of an invention which consists in the 
 use of known materials in certain proportions is not bad for 
 uncertainty, because the patentee does not limit his claim 
 
 (a) 1 Q. B. 938 ; 1 "Webs. P. 
 R. 218. 
 
 (J) Neilson v. Harford, 1 
 
 Webs. P. K. 341 : 
 Fairie, ih. 154. 
 
 Derosne v. 
 
THE SPECIFICATION. 87 
 
 to tte precise proportions recommendeui, but the relative Chap. iv. 
 
 proportions must be ascertained. Thus where the patent 
 
 was for increasing the hardness and durability of type by 
 
 using tin and antimony, the best proportions being 75 per 
 
 cent, of tin and 25 per cent, of antimony j ,but it was said 
 
 that these proportions might be varied if lead were used, 
 
 provided that it did not exceed 50 per cent, of the whole, 
 
 and the specification was objected to on the ground of 
 
 uncertainty, the objection was overruled, (a) But where 
 
 the specification leaves it uncertaid what proportions are 
 
 to be used it will be bad. (&) 
 
 If the patentee between the time of applying for the All improve- 
 
 ■.-. . ■. ,1 -n ,• limn ments must be 
 
 patent and the time when the specification must be nled stated. 
 makes any fresh discoveries or any improvements in the 
 method of working the patent, he is bound to introduce 
 them into the specification and communicate his latest 
 knowledge to the public. The object of allowing the 
 patentee six months' protection is that he may be able 
 freely to make experiments and improve his invention with- 
 out any fear of the consequences of publication and user, (c) 
 >b The specification must describe means competent to JMeans com- 
 
 '^ ^ . petent to per- 
 
 perform all comprised in the patent, (a) \f>v formspeci- 
 
 ' iip 'i'j.1 fication must 
 
 Where a patent was granted tor a macmne to snarpen be described, 
 knives and scissors, and the specification directed this to 
 be done by passing- their edges backward and forward in 
 
 (a) Patent Type Founding Co. (c) Crossley y. Beverley, 9 B. 
 
 V. Walter, 1 Johns. 381. And & C. 63 ; 1 Webs. P. K. 117; 
 
 see Hill v. Thompson, 8 Taunt. Crane v. Price, ib. 404 ; Jones v. 
 
 382 • 1 Webs. P. K. 243. Heaton, ib. 404 n. ; Liardet v. 
 
 (S) Muntz V. Foster, 2 Webs.. Johnson, ib. 54 n. 
 
 ' P. R. 109 ; JBetts v. Menzies, 10 ^d) Crossley v. Beverley, 1 
 
 H. L. G. 117. See note to Webs. P. R. 117. 
 Liardet v. Johnson, 1 Webs. P. 
 R. 54. 
 
88 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 One mode at 
 least must be 
 stated. 
 
 an angle to be formed by the insertion of two circular 
 "" files, and it was also stated that other materials might be 
 
 used according to the delicacy of the edge; but it was 
 proved that for scissors there ought to be one circular file 
 and a smooth surface, and that two Turkey stonesmight also 
 succeed ; it was 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, (a) 
 Mode must be '>^ A claim to perform a certain process which doe3_not^ 
 point out the mod e in the specification is too large and 
 cannot be supported. (6) % 
 
 ^JyOne mode at least which will succeed must be stated. ^ 
 In Derosne v. Fairie, (c) a patent was granted for "" certain 
 improvements in extracting sugar or syrup from cane 
 juice, and other substances 'containing sugar, and- in re- 
 fining sugar and syrup." The specification stated the 
 invention to consist in a means of discolouring syrups of 
 every description by means of charcoal, produced by the , 
 distillation of bituminous schistus alone or mixed with 
 animal charcoal, and even of animal charcoal alone. The 
 discoloration was to be produced by means of a filter 
 made of charcoal, and it was stated that " the carboniza- 
 tion of bituminous schistus 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." It appeared that the 
 operation failed if applied to cane juice before it was 
 
 (a) Felton v. Greaves, 3 C. & 
 P. 611; Bambridge v. Wigley, 
 1 Caip. P. C. 270. 
 
 (J) Booth V. Kennard, 2 H. & 
 N. 95. 
 
 (c) 2,C.M.&R.476; 1 Gale, 
 109 ; 1 Webs. P. R. 154. 
 
THE SPECIFICATION, 89 
 
 boiled, and nothing was said in the specification as to any Chap. IV. 
 process before filtering j but it was said that syrup in a 
 proper state might be obtained by a mixture of sugar 
 and water. It was shown in evidence that the process 
 was applicable with advantage to the syrup after it had 
 undergone a certain amount of heat before granulation 
 took place, though it would fail if granulation had taken 
 place. It was held, therefore, that the expression " ex-^ 
 tract'"' might fairly be understood to mean the process to 
 be appUed with advantage to the extracting of syrup 
 from cane juice before it arrived at that consistency at 
 which granulation took place. 
 
 If the specification represents that there are many Specification 
 
 . 1 -11 T 1 bad if one only 
 
 modes of doing a thing when m fact one only "will do, the of many modes 
 patent wiU be avoided ;(a) so, too, if it is stated that the 
 invention may be carried into effect by either of two 
 . modes, and one is impracticable, (b) 
 
 The specification is bad if it is so manifestly ambi- Ambigu^y 
 
 ^- _ " vitiates speci- 
 
 guous that its meaning cannot be discovered by any ficatio 
 person of ordinary judgment. (c) "It is incumbent on 
 the patentee to give a specification of the invention in 
 the clearest and most unequivocal terms of which the 
 subject is capable. And if it appears that there is any 
 unneces sary am biguity affectedly mtrodufied into the ^^ 
 specification,^.^nj^ng which tends _ to _mjtlead the '"'''^ :-" 
 public, in that case the patent is void." {d) ^ 
 
 (a) Lewis v. Marling, 4 C. & (c) Galloway v. Bleaden, 1 
 
 P. 57 ; 10 B. & C. 22 ; 1 Webs. Webs. P. K. 524. 
 P R 496. W ^^ Ashnrst, J., in Turner 
 
 ' (b) R. V. Cvtler, 3 C. & K. v. Winter, 1 T. K. 605 ; 1 Webs. 
 
 .215 ; 14 Q. B. 372 n. ; Turner P. R. 80. See Spencer v. Jack, 
 
 V. Winter, 1 T. R. 608 ; 1 Webs. 11 L. T. (N. S.) 244. 
 P. R. 82. 
 
90 THE SPECIFICATION. 
 
 CiiAp. IV. In Eastings v. Brown, [a) the specification of a patent; 
 
 for " certain improved, arrangements for raising ships' 
 anchors and other purposes/' claimed as the invention 
 an alleged improvement upon the structure of that part 
 of a ship's windlass round which the chain cables of 
 anchors are wound, and by which they are held fast 
 without slipping. The form which was claimed by the 
 invention was denominated a scalloped shell, and the 
 appUeability of a windlass so constructed to every size 
 of chain cable was also claimed. It was admitted 
 that there was no novelty in constructing a wind- 
 lass so as to hold fast a single chain cable of any 
 given size. The specification, so far as is material, 
 was as foUowa : — " The scaUBp shell in which the iron 
 chain cable appears in the drawing is upon a new plan to 
 hold without slipping a chain cable of any size, as shown 
 by the opening form of the scallop at the top and bottom 
 of fig. 2." ''And I also claim &,s my invention the new 
 form of a scalloped shell (as shown in fig. 2), in conjunc- 
 tion with the arrangements herein described." The^ 
 drawings referred to in the specification appeared to show L 
 a construction applicable either to a "sin gle c aEIe ^or to ) 
 cables of different sizes. It was proved mBt-the specifi- 
 cation and drawings would enable a competent workmai^ 
 to make a cable holder which would" hold chains of dif^ 
 ferent sizes ; but it was held that, as the specification dad 
 not state distinctly for what the patent was dg,imed-; and' 
 was ambiguous, as it did not point out clearly whether it 
 was an invention of a cable holder to hold a chain of oae 
 particular size, or to hold cables of different sizes, it was 
 therefore void. 
 
 In Bloxam v. Elsee (&) the patent was for a machine for 
 (a) 1 El. & Bl. 450. (b) 6 B. & C. 169 ; 1 C. & P. 558. 
 
THE SPECIFICATION. 91 
 
 making paper in single sheets without seam or joiningj Chap, iv 
 from one, to twelve feet and upwards wide, and from one 
 to forty-five feet and upwards in length. It appeared 
 that the machine was capable only of producing paper of 
 a definite width, and that in order to vary the width a new 
 machine was required. It was held that the meaning of 
 the patent was that paper varying in width between those 
 extremes should be made by the same machine, and that 
 the patent was therefore void. 
 
 In Ralston Y. ^mith (a) the description " a roller of hard 
 metal or other- suitable material " was considered not to 
 be too uncertain on account of the use of the words " or 
 other suitable material," as such words would riean any 
 material equally sufficient for the purpose with hard 
 metal. 
 
 And in Macnamara v. Hulse (b) it was held that a 
 paitent taken out for blocks for paving with "stone or 
 pther suitable material" would, include wood pavement, 
 although no wood pavement was in actual use at the date 
 of the patent, and although the inventor might not have 
 had wood pavement in contemplation. 
 
 It is usual in the specification, after the patentee has claim in the 
 described his invention and the means for carrying it notnecesssuy. 
 into effect, to insert a short clause, in which the patentee 
 expressly states what he claims as his invention. But a 
 claim is not an essential part of the specification, nor 
 necessary for the protection of the invention, (c) 
 
 The claim is introduced for the security of the patentee Its object, 
 that he may not be supposed to claim more than what he 
 can support as an invention ; it is not intended to be any 
 
 (a) 11 H. Ii. C. 223. (c) Lister v. Leather, 8 El. & 
 
 (b) Car. & M. 471.^ Bl. 1004. 
 
Chap. IV. 
 
 Means of 
 ^effectuating 
 invention con- 
 Bidered as 
 claimed. 
 
 92 THE SPBOiFICATION. 
 
 description of the means by which the invention is to be 
 performed, but is for the purpose of making the descrip- 
 tion intelligible, not to aid it, but to asceriiain the extent 
 of what is claimed as new. (a) 
 
 (A patentee describing his invention in the specification 
 I is to be taken to claim as part of his invention all that he 
 describes as the means by which it is to be carried into 
 effect, unless he clearly expresses a contrary intention. ^) 
 Where the specification of a patent for "improvements in 
 apparatus for stitching and sewing," to which drawings ' 
 were attached, after describing an instrument marked 
 ■" g," continued, " It is the arranging an instrument ' g ' 
 as herein described, which, while it is the means of holding i 
 the fabric . . . . is' also the means by which the step-by- / 
 step motion is given to the fabric, which consfitutes the\ 
 peculiarity of my invention." It was held that this was 
 not a claim of aU 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, (cp 
 Where the patent was 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," and the means, by which the invention was 
 to be applied, were pointed out in the specification, the 
 patentee was held to be entitled to the exclusive applica- 
 
 (fl) Kay V. Marshall, 3 My. & 
 Cr. 373 ; 2 Webs. P. R. 39. ^-^ 
 
 (6) Teiley v. Boston, 2 C. B!" 
 (N. S.) 706. 
 
 (c) Thomas y^Wdel^Jj. R. 1 
 C. P. 192. 
 
i^' 
 
 THE SPECIFICATIOlir. 93 
 
 tionof the detonating mixture as priming, whateyer the Chap. iv. 
 construction of the lock by which it was discharged, (a) 
 So where the invention consisted in the discovery of the 
 . principle that air heated to a high temperature was very 
 beneficial in blast furnaces, and the patentee directed that 
 it should be heated in a vessel immediately before enter- 
 ing the furnace, it was held that the specification was noty^ 
 void, because no particular shape of vessel was claimed. (6) 
 
 A claim for the application of a new material to an old Claim for 
 purpose is good, and will not affect the validity of the new material 
 patent, (c), , ^oU purposes. 
 
 /^" If thes^ecification, as containing the description, be General words 
 I suflB.ciently precise, it is of no consequence that expres-? profess to be' i 
 sions are used in the claim, which would be too general aescription do ' 
 if they professed to be part of the description, {d) Thus-^^'i^*^*** J 
 where the specification described the invention and the j 
 m&chinery by which the manufactured article was pro- V. , u, ,- , 
 duced, and said that the article was made by machinery, 
 and that nothing but machinery would avail to make it, 
 a claim to perform the work " by machinery" was held 
 not to be too large, (e) 
 
 But if the specification says definitely that the invention claim may not 
 
 . ^ , , ■ 1 . . be more exten- 
 
 is to be carried out by a particular pr ocess or^maMroe; sivethan 
 describing it; which is claimed; the claim wiffbe confined ^^^^ 
 to the o pgratio n ^ the process ^ jngchine. In Barber 
 
 (a) Forsytli\.Biviere,\W ehs. (c) Neihon v. Betts, L. R. 5 
 
 P. R. 97. See also Neihon v. H. L. 1. 
 
 Thompson, ib. 283 ; Cochrane r. (d) Kay v. Marshall, 1 My. 
 
 Braifhwaite, 1 Carp. P. R. 493 ; & Cr. 373 ; 2 Webs. P. R. 
 
 Neilson v. Baird, 6 Dec. of Ct. of 39. 
 Sess., 2nd series, 51. (e) Arnolds. Bradbury, 'L.'R., 
 
 iV) Neilson v. Harford, 8 M. 6 Ch. 706. 
 & W. 806; 1 Webs. P. R. 
 371. 
 
/ 94 THE SPECIFICATION. 
 
 Cbap. IV. /^v. Grace {a) it was held that a specification which claimed' 
 as the inyention a process of finishing hosiery by means . 
 of a press heated by steam, and the drawings representei 
 the press as consisting of two boxes ; could not also in- 
 clude a process of finishing goods by means of heated 
 ' rollers. 
 
 Where the patentees claimed certain machinery for 
 giving diagonal or vibratory motion to the selvages of 
 cloth, and went on to say, " as it is not practicable to. 
 describe every possible mode in detail, we desire it to be 
 understood 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 inven- 
 tion, if for the purpose of drawing the threads into 
 diagonal positions by mechanical means instead of manual 
 labour ;" it was held that the patentees only claimed as 
 their invention those improvements on the old machine 
 that gave the vibratory motion to the fabric while in the 
 course of drying. (&) 
 
 In Minter v. Wells (c) the patentee claimed as his in" 
 vention " 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 described,'' Alderson, B., said : 
 " If it could be shown that any self-adjusting leverage 
 had been before the plaintiff's patent applied to a chair, 
 the patent would be void, because the priority of the 
 specification given by him woxdd claim every species of 
 %he application of a self-adjusting leverage to the back , 
 and seat of a chair j he would have claimed, not the par- 
 
 (a) 1 Exch. 339. (c) 1 Webs. P. R. 130. 
 
 (6) M'' Alpine v. Mangnall, 3 
 C. B. 496. 
 
THE SPECIFICATION. 95 
 
 ticular way of accomplisHng the particular purpose by the Chap. iv. 
 particular enginOj but lie would have claimed too muchj 
 because he would have claimed the apJ)Hcation of such 
 self-adjusting leverage to the back and seat of a chair/' 
 
 •A patentee cannot by making a general claim obtain General claim 
 the benefit of improvements of which he was ignorant at elude improve- 
 the date of his patent, (a) ments. 
 
 The specification is not conclusive evidence of that for Parol eTidence 
 which the patent was obtained, but parol evidence of the kitted to 
 patentee is admissible to prove that the patent was not r^"^ *'" " *™' 
 obtained for some of the things obtained in the specifica-' 
 tion, but for the new com.bin'ation of several old matters. (&) 
 ^Wbere a patent is for a new mode of applying old\specification ''i 
 materials, the claim must be for the materials and the /Ce-w mode of 
 mode of applying then^rbgether, else the patent wiU be/I matenaS must 
 void. A patentee claimed " the metal fixings and mlfXZl^T^ 
 mode of applying the same, described herein as theM^PP^y^'^g*'^^"'- 
 second part of my invention." The jury found that the) 
 metal fittings by themselves were old, but that the modei 
 of applying them, was new. Erie, C. J., said: — " If the 
 true construction^ is, that the metal fittings are claimed 
 separately from the mode of applying the same, the pa- 
 tent is void for want of novelty. Then are the metal 
 fittings claimed separately ? We think not. The context 
 expresses that one part of the invention consists of mtetal 
 fittings, and the mode of applying them described herein. 
 If the patentee meant to claim the metal fittings as one"! 
 separate part, and the mode of applying them as another / 
 part, his words do not express that meaning." (c) ~^^<^^ 
 
 (a) TetleyY.Easton,MsiCT.77. , <c) Oxleyv. Holden, S C. B. 
 
 (6) Bateman v. Gray, 8 Exch. (N. Sr) 705. 
 906; Macr. Ill; Crossley v. 
 Potter, Macr. 253. 
 
96 
 
 THE SPECIFICATION. 
 
 Chap. IV.' 
 
 Discovery of 
 principle ^nd 
 application of 
 principle to be 
 aistinguished. 
 
 Specification 
 of patent for 
 application of 
 old invention 
 to new material 
 or purpose 
 must claim 
 means of 
 effectuating 
 invention. 
 
 Specification 
 of patent for 
 addition or 
 improvement 
 must be for 
 addition or 
 improvement 
 only. 
 
 If a principle is claimed while the invention consists 
 only in the application of the principle by new machinery, 
 the specification is bad. Thus where a patentee claimed 
 the principle of introducing fuel at the lower part of the 
 grate in a perpendicular or oblique direction, and the 
 principle was not new, though the application of the 
 principle as described was, the patent was held to be 
 void, (o) 
 
 Where the patent is for the application of a known 
 instrument to a new material j^rjgurpose, it must appear 
 that the m eans essentiaj. for carrying the ajiplicatioBuislio 
 effect are new, and the specification must claim them. 
 Thus where the patent was for the invention of a -nipping 
 lever for causing the • rotation of wheels, shafts or 
 cylinders, and in the specification the patentee claimed 
 as his invention " the nipping lever, with its tusk 
 sliding box (before described), 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 at- 
 tached thereto," and it appealed that the nipping lever 
 was not TieWj but that its application by me ans of the 
 sliding boxes was, it was held that it^must also, be shown 
 that the use of the sliding boxes was nece ssary or essential 
 to the use of the invention. (6) 
 
 If the invention is for addition or improvement, the 
 patent must be taken out not for the whole machine with 
 the addition, but for the addition or improvement only (c) 
 as the public have a right to purchase the improvement 
 
 (a) M. V. Cutler, 1 Stark. 354. 
 See also Oamble v. Kurtz, 3 C. B. 
 425. 
 
 (V) Powv. Taunton,9 Jnr.1056^ 
 
 (c) Homhlower v. Boulton, 8 
 T. K. 103 ; Bovill v. Moore, 2 
 Marst. 214. 
 
THE SPECIFICATION. 97 
 
 by itself wittoutbeing incumbered by other tbings, (a) and Chap. iv. 
 if tbe specification claims discovery when the invention 
 is merely for an addition or improvement, it is bad. In 
 Hill V. Thompson, Q}) tbe specification contained among 
 other things the following claim, ''and that my said 
 improvements do farther consist in the use and application 
 of Hme to iron, subsequently to the operations of the 
 blast furnace, whereby that quality in iron from which 
 the iron is called ' cold short ' howsoever and from what- 
 ever substance such iron be obtained, is sufficiently 
 prevented or remedied and by which such iron is rendered 
 more tough when cold. And I do farther declare that 
 I have discovered that the addition of lime or limestone 
 or other substances consisting chiefly of lime, and free or 
 nearly free from any ingredient known to be hurtful to 
 the quality of iron, will sufficiently prevent or remedy 
 that quality in iron from, which the iron is called ' cold 
 short,' and will render such iron more tough when cold ; 
 and I' do for this purpose — if the iron, howsoever, 
 and from whatever substance the same may have been 
 obtained, be expected to prove ' cold short' — add a portion 
 of lime or limestone or of the other said substances, of 
 which the quantity must be regulated by the quality of 
 the iron to be operated upon, and by the quality of the 
 iron wished to be produced ; and further, that the said 
 lime or limestone or other aforesaid substances may be 
 added to the iron at any time subsequently to the reduc- 
 tion thereof in the blast furnace, and prior to the iron 
 becoming clotted or coming into nature, whether the same 
 be added to the iron while it is in the refining or in the 
 
 (a) Boulton y. Bull, 2 H. Bl. (h) 8 Taunt. 424 ; 2 B. Moo. 
 
 489 424 ; 1 Webs. P. R. 237. 
 
 H 
 
98 THE SPECIE'ICATION. 
 
 Chap. IV. puddling furnace, or in both of them, previous to the said 
 "" iron being put into either of the said furnaces." It 
 
 appeared that " cold short" had been prevented by the 
 use of lime before ; and Dallas, J., said : " The purpose 
 is to render bar iron more tough by preventing that 
 brittleness which is called ' cold short,' and which renders 
 bar iron less valuable ; the means of prevention stated 
 are application of lime. In what way, then, is Hme 
 mentioned in the patent? The first part of the speci- 
 fication, in terms, alleges certain improvements in the 
 smelting aud working of iron, during the operations of 
 the blast furnace ; and then, introducing the mention of 
 lime, it states that the application of it to iron subse- 
 quently to the operation of the blast furnace will prevent 
 the quality called ' cold short.' So far, therefore, the 
 application of lime is in the terms claimed as an improve- 
 ment — and nothing is said of any previous use — of which 
 the use proposed is averred to be an improvement ; it is, 
 therefore, in substance a claim of entire and original dis- 
 covery. The recital should have stated, supposing a 
 previous use to be proved in the case, that, whereas lime 
 has been in part, but improperly, made use of, etc., and 
 then a different mode of application and use should have 
 been suggested as the improvement claimed. But the 
 whole of the jpatent must be taken t ogeth er and this 
 objection will appear to be stronger as we proceed. And 
 here, again, looking through the patent in a subsequent 
 part of the specification, the word ' discovery' first occurs 
 and I will state the terms made use of in this respect : 
 And I do further declare that I have discovered that the 
 addition of lime will prevent that quality in iron from 
 which the iron is called 'cold short' and will render such 
 iron more tough when cold; and that for this purpose 
 
THE SPECIFICATION. 99 
 
 I do add a portion of lime or limestone, to be regulated Chap. IV. 
 by the quantity of iron to be operated upon, and by the 
 quality of iron to be produced, to be added ait any time 
 subsequently to the reduction in the blast furnace, and 
 this from whatever substance the iron may be produced, 
 if expected to prove ' cold short.' Now this appears to be 
 nothing short of a claim of discovery in the most exten- 
 sive sense of the effect of lime applied to iron to prevent 
 brittleness, not qualified and restrained by what follows as 
 to the preferable mode of applying it under various cir- 
 cumstances, and therefore rendering the patent void, if 
 lime had been made use of for this purpose before; 
 subject to the qualification only of applying it subse- 
 quently to the operations in the blast furnace." (a) 
 
 In Bramah v. Hardeastle, (&) Lord Kenyonj C. J., said : 
 "'Unlearned men look at the specification and suppose 
 everything to be new that is there. If^the whole be not 
 new it is hanging^terrprs. over tJiem." . 
 
 Where the plaintiff's invention which was admitted to 
 be ingenious and useful consisted in the insertion of a 
 pipe into an old stove for conveying the air into it ; but 
 the specification claimed the whole apparatus, and did not 
 confine the invention to the application or addition of the 
 pipe to an old stove, the patent was held to be void", (c) 
 
 And where the specification claimed the exclusive 
 liberty of making lace, composed of silk and cotton- 
 thread mixed not of any particular mode of mixing them ; 
 land it was proved that silk and cotton- thread had often 
 previously been mixed on the same frame for lace, in 
 different modes, the patent was held to be void, as the 
 
 (a) See 2A.S0 Saunders Y.Astm, (c) Williams . v. Brodie, 1 
 
 3 B. & Ad. 886. Webs. P. R. 75. 
 
 (6) 1 Webs. P. K. 76. 
 
100 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 Additions and, 
 improvements 
 must be~dis- 
 tinguished. 
 
 specification did not claim the particular mode of mixing 
 the lace, (a) 
 
 A claim for a patent for improvements in the mode of 
 doing something by,_a known process is suflGLcient to en- 
 title the patentee 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 application. (6) i 
 
 Where a patent is for an entirely new i nventio n, it is ' 
 not necessary that the specification should describe and 
 distinguish the different parts. But where the invention 
 consists of additions or improvements, all the parts which 
 are new must be described, and distinguished from those 
 which are old, (c) and must be distinctly claimed as new. {d) 
 It is not sufficient to give a general description of the 
 construction of the machine without making such distinc- 
 tion, (e) In Saunders v. Aston{f) the specification of a 
 patent for making buttons stated the improvement to 
 consist in the substitution of a flexible material for metal 
 shanks by the help of a metal collet. The use of the collet 
 was new, but it was not claimed, and the specification was 
 held to be bad. Littledale, J., saying: "Neither the 
 button nor the flexible shank was new, and they did not 
 
 (a) B. V. EUee, BuU (N. P.) 
 76 ; 1 Webs. P. R. 76. 
 
 (6) Electric Telegraph Co. v. 
 Brett, 10 0. B. 838. 
 
 (c) Nickels V. Ross, 8 C. B. 
 723 ; Dangerfield v. Jones, 13 
 L. T. (ST. S.) 144. 
 
 (<f) Morris -v. Bransom, Bull 
 (N. P.) 76 ; 1 Webs. P. K. 51 ; 
 
 Ormson v. Clark, 14 C. B. (N. S.) 
 490. 
 
 (e) Macfarlane v. Price, 1 
 Stark. 199 ; 1 Webs. P. R. 74 ; 
 R. V. Cutler, 1 Stark. 354; 1 
 Webs. P. R. 76; R. v. Ark- 
 wright, 1 Webs. P. R. 67. 
 
 (/) 3 B. & Ad. S81 ; 1 Webs. 
 P. R. 75 n. 
 
THE SPEClFICATIOlir. 
 
 101 
 
 by merely being put together constitute such an inven- Chap. iv. 
 tion as could support the 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 
 Tol^e ct of his invention, and is in fact only one mode of 
 ■carrying it into effect." Lord Westbury in Foxwell v. 
 Bostock ,{a) laid down the rule as follows : " In a patent 
 for an improyed arrangement or new combination-of ma- 
 chinery ^e"specification must describe the improvement 
 and define the nov^iy otherwise, and in a more specific 
 form than by the general description of the entire 
 machine, it must assign the differentia of the new combi- 
 nation. This obligation flows directly from the condition 
 of the patent that the specification shall particularly de- 
 scribe and ascertain the invention." (h) 
 
 A patent which includes the subject matter of an exist- improvement 
 ing patent is valid, but the specification must properly dis- patent Tai&, 
 tinguish'the new from th e old , (c) In Harmar v. Playne, (d) (j^^t^gufahed. 
 it was held that a specification describing a whole machine 
 the subject of two patents, but not referring to the former 
 specification or pointing' out the particular improvements 
 the subject of the latter patent, except in so far as the second 
 specification recited the former, was sufllcient. (e) Where 
 a patentee has taken- out a fresh patent for improvements 
 on his original invention, it is sufficient, if on reading his 
 second specification with the first, an artisan would have no 
 substantial difficulty in ascertainiag what was claimed. {/) 
 
 (a) 4 De G. J. & S. 313 ; 10 1 Webs. P. E. 413 ; Bovill v. 
 
 L. T. (N. S.) 144. 
 
 (6) And see Parhes v. Stevens, 
 L. E. 8 Eq. 358 ; Murray v. 
 Claytm, L. K. 7 Ch. 585. 
 
 (c) Crane v. Price, 4 M. & 
 Gr. 580 ; 5 Scott (N. E.) 338 ;. 
 
 Moor^, 2 Marsh. 211. 
 
 (d) 11 East, 101. 
 
 (e) And see Foxwell v. Sos- 
 tock, 10 L. T. (N. S.) 144. 
 
 (/) Parhes v. Stevens, L. R. 
 8 Eq. 358. 
 
102 THE SPECIFICATION. 
 
 Chap. IV. If there is a patent for a machine and also for an im- 
 
 provement ia the use of it, if it cannot be supported for 
 the machine, although it might be for the improvement 
 merely, it is bad on account of its attempting to cover too 
 much, (a) But if taking the whole specification together 
 the court can see that the improvements only are claimed 
 it mil be sufficient. (&) Thus where the specification of a 
 patent for " improvements in the manufacture of frills or 
 ruffles, and in^the_.^icliin^ry_or_apparatus employed 
 therein " described a process of plaiting fabrics by means 
 of a reciprocating knife in combination with a sewing 
 machine and claimed (1) the general construction, arrange- 
 ment and combination of machinery for producing plaited 
 frills or trimming in a sewing machine ; (2) the appHcation - 
 and use of a reciprocating knife for crimping fabrics in a 
 sewing machine; and (3) the peculiar manufacture of 
 crimped or plaited frills or trimming "as her einbefor e 
 described " and illustrated by a drawing ; it was conten- 
 ded that the manufacture described included the use of 
 the sewing machine, or that it was a manufacture by means 
 not only of the reciprocating knife, but of a sewing 
 machine, without which the completed article could not 
 be produced in^the manner described. It was held, how- 
 ever, looking at the whole specification and claim, that 
 this was only pointed out as the best mode of completing 
 the manufacture, as the sewing machine was treated as a 
 , known invention already in use, and it was separate and 
 distinct from^ttie^ mode_of^grimping or plaiting to which 
 the plaintiff laid claim, (c) 
 
 (a) Hill V. Thompson, 3 Mer. (c) Wright v. Hitchcock, L. 
 
 626 ; 1 Webs. P. R. 237. R. 5 Exch. 37. 
 
 (6) McAlpine v. Mangnall, 3 , 
 C. B. 515. 
 
THE SPECIFICATION. 103 
 
 Wtere the invention is partly original and partly Chap. iv. 
 communicated from a foreign country, the part cotn- p t~7~ 
 municated from the foreign country must be defined in *'"" foreign 
 
 . must be 
 
 the specification, (a) , distinguished. 
 
 If a patent is taken out for an invention consisting of Specification 
 distinct parts, and any one of them is not new, the whole of distinct °"^ 
 is void. In Kay v. Marshall, (6) the patent was for " new P*"^ "°* "^''• 
 and improved machinery for preparing, and spinning flax, 
 hemp and other fibrous substances by power." The spe- 
 cification claimed as the patentee's invention in respect of 
 new machinery for preparing flax, etc., the macerating 
 vessels marked B in the plan or drawing annexed to the 
 specification> and the trough of water marked C ; and in 
 respect of improved machinery for spinning, the wooden 
 or other trough marked D for holding the rovings when 
 taken from the macerating vessels, and placing the retain- 
 ing rollers e e and the drawing rollers c c nearer to each 
 other than they had ever before been placed, say within 
 two-and-a-half inches of each other for the aforesaid pur- 
 pose. Before the date of the patent, flax, hemp and other 
 fibrous substances were spun with machines with slides, 
 by which the reach was varied according to the length of 
 the staple or fibre of the article to be spun, and the reach 
 varied in different kinds of spinning between ^ of an inch 
 and 14 inches, but it was not known that flax could be 
 spun by means of maceration as having a short fibre at 
 a reach of 2^ inches, or about those limits. On a case 
 sent to the Court of Common Pleas by Lord Laiigdale it 
 was held ; and affirmed on appeal to the House of Lords, (c) 
 
 (a) Renard v. Levenstein, 10 (c) 8 C. & P. 245 ; 2 Webs. 
 
 L. T. (N. S.) 177. P. R. 79. 
 
 (6) 5 Bing. (N. C.) 492; 7 
 Scott, 548 ; 2 Webs. P. R. 71. ^ 
 
104 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 One of several 
 inTentions not 
 improvement 
 patent void. 
 
 Patent for 
 comMnation 
 does not claim 
 each part as 
 new ; but if 
 specification 
 claijns whole 
 combination as 
 new, when not 
 so, it is bad.- 
 
 that there were two distinct processes^ and that though 
 the first relating to macerating the flax was new and 
 useful, and the proper subject of a patent, yet that the 
 second being merely an application of a piece of machinery 
 already well known and in use, to the new macerated state , 
 of the flax, the specification claiming both processes as 
 invention could not be supported, (a) 
 
 If a patent is taken out for several inventions which are 
 claimed as improvements, and one of them is not an im- 
 provement, the patent is void. (&)' 
 
 In Brunton v. Hawhes{o) the patent was for improve- 
 ments in the construction of ship's anchors, windlasses, 
 and chain cables or moorings. That part of the patent 
 which related to the manufacture of anchors was proved 
 not to be new, and the whole patent was therefore held 
 to be void, although there was great merit in the other 
 inventions. 
 
 A patent for a conibination, is not a claim that each 
 part of the combination is new ; {d) but if the specification 
 of a patent for a combination of things partly new and 
 partly old, claims the whole combination as new, the 
 patent wiU be void; the nature'of the invention must be 
 described in such a manner that a person of ordinary in- 
 telligence can, on reading it, see what is claimed as new, 
 and what is old. 
 
 In the case of Holmes v. The London and North 
 
 (a) And see Templeton v. 
 Macfarlane, 1 H. L. C. 595; 
 Gibson v. Brand, 4 Scott (N. 
 R.) 844 ; 4 M.' & G. 179 ; 1 
 Webs. P. R. 634. 
 
 (6) Morgan v. Seaward, 2 M. 
 & W. 544; 1 Webs, P. R 197; 
 
 Cornish v. Keene, 1 Webs. P. R. 
 505 ; Losh v. Hague, ib. 204 ; 
 R. V. Arhwright, ib. 72. 
 
 (c) 4 B. & Aid. 542. 
 
 (d) Lister v. Leather, 8 El. & 
 31. 1017. 
 
THE SPECIFICATION. . 105 
 
 Western Railway 0.o.,{d) the specification of "an im- Chap. iv. 
 proved turning table for railway purposes" described 
 tbe invention " to consist in supporting the revolving 
 plate and upper platform of the turning table, as also its 
 stays, braces, arms and supports, on the top of a fixed 
 post, weU braced and resting on, or planted in, the 
 ground, the top of which post forms a pivot for the table 
 to turn on, while the supporting arms, radiating from a 
 frame work (the weight of which is also suspended on the 
 post), moving round the bottom part of the post with 
 friction rollers, and fastened to the outer edges of the 
 iplate, stay the plate at all sides, and keep it steady to 
 receive the superincumbent weight of carriages or what- 
 soever is to be^ turned upon it." The manner in which 
 the invention was to be performed was then described 
 with reference to drawings, and the specification con- 
 cluded as follows i — " Now, whereas I claim as my inven- 
 tion the improved turning-table hereinbefore described, 
 and such my invention being, to the best of my know- ' 
 ledge and belief, entirely new, and never before used, I 
 do declare this to be my specification of the same ; and 
 that I do verily believe this my specification doth comply 
 in all respects fully, and without reserve or disguise, with 
 the proviso in the hereinbefore in part recited letters 
 patent contained ; wherefore I hereby claim to maintain 
 exclusive right and privilege to my said invention." The 
 ^'ury found that the only novelty in the plaintiff's inven- 
 tion consisted in the suspension rods ; as it was proved 
 that, previous to the date of the specification, the rest of 
 the machinery had been described in a patent for an in- 
 vention for the same purpose, granted to another person, 
 
 (a) 12 C. B. 831. 
 
A 
 
 106 THE SPECIFICATION. 
 
 ' Chap. IV. and it was held that as the. plaintiff's specification claimed 
 
 the whole combination as new, the patent was void.(a) 
 Or if it claims If the specification claims any portio n of the combina- 
 wMch is n^t tion as new which is not so, the patent is void.(&) Where 
 ^^°' letters patent were granted for " improvements in agri- 
 
 cultural machines," and the specification described the 
 invention to consist in " the constructing and placing of 
 ' holding fingerSj cutting blades, and gathering reels re- 
 f" r/ spectively, in a_^ manner described, and the' embodiment of 
 these parts so constructed and placed, all or any of them, 
 in machines for reaping purposes," it was held that the 
 patent was for the combination, and that the use of a knife 
 alone similar to that described in the patented machine 
 was not an infringement, (c) 
 
 In Thomas v. Foxw6ll,{d) the patentee of a sewing 
 machine claimed "the application of a shuttle in combi- 
 nation with a needle, as shown inthe drawings for form- 
 ing and securing loops of thread or other substances for 
 thepurpose of producing stitches, either to unite or orna- 
 ment fabrics, whatsoever may be the means employed for 
 working such shuttle and needle when employed toge- 
 ther." The shuttle and needle had been worked together 
 previously ; and it was held that as the claim was not 
 confined to the single application of a shuttie in combina- 
 tion with a needle, as shown in the drawings, but extended 
 generally to the application of a shuttle in combination 
 with a needle, for the purposes of the invention, -the 
 patent was void. 
 
 (a) See also Bovill v. Moore, (c) McCormich, v. Gray, 7 
 
 2 Marsh, 211 ; Carpenter v. H. & K 25 ; Parhes v. 'Stevens, 
 
 Smith, 1 Webs. P. E. 532. L. R. 8 Eq. 367. 
 
 (J) Lister v. Leather, 8 El. & (rf) 5 Jur. (K S.) 37 ; affd. 
 
 Bl. 1017. 6 Jur. (N. S.) 271. 
 
THE SPECIFICATION. 107 
 
 '' A patentee will not however be presumed to have Chap. iv. 
 claimed anything so generally in use that he must have p ^ ~ 
 known that to claim it would be to vitiate his patent/a) presumed to 
 
 . 1 V / claim anything 
 
 If a patent includes matters some of which are new "well known. 
 
 and some are old, it may be read by limiting the claim to deification 
 
 the particular cojubination in the particular manner may be limited. 
 described in the specification. (6) > ,. 
 
 A patent is a patent for a combination, if a combina- Combination 
 
 tion is expressly stated in the specification to be a part of expressly ^ 
 
 the invention, although the combination is not actually ''^*™®°- 
 claimed, (c) 
 
 A patent will be goodjj^although each principle or pro- Combination 
 
 ... n 1 j_ n T • IT *i T of old matters. 
 
 cess m it IS well known to all persons engaged m thjjrade 
 
 to which the patent relates, provided that the mode of ( . ' -^ - 
 
 combination is new and produces a beneficial efieciET^and 
 
 also that the specification claims, not the old processes, or 
 
 any one of them, bat only the new combination.(c?) 
 
 The rules governing the construction of specifications Rules of con- 
 are the ordinary rules for the interpretation of written 
 instruments, having regard especially to the rule that- 
 the specification is void if it does not particularly ascer- 
 tain and describe the nature of the ■ invention and the 
 manner in which it is to be performed.(e) 
 ^ The title must be read in connection with the specifi- Title and 
 
 _.,,., , 11,1 1 specification 
 
 cation, and the whole instrument must be taken together . read together. 
 for the purpose of interpretation.(/) ^ 
 
 (a) Haworfh v. Hardcastle, (c) Lister v. Leather, 8 El. & 
 
 1 Webs. P. E. 484. Bl. 1004. 
 
 (J) Daw V. Eley, L. K. 3 Eq. (d) Cannington v. Nvttall, L. 
 
 496 ; Seed v. Eiggins, 8 H. L. C. R. 5 H. L. 205. 
 
 261, -where there was an express (e) Simpson v. HoUiday, 13 
 
 disclaimer of previous inventions; W. K. 578, on app. L. R. 1 H. L. ' ~ 
 
 JFoxwell V. Bostoch, 4 De G. J. 320. 
 
 & S. 298 ; 10 L. T. (N. S.) 144. (/) Beard v. Egerton, 8 C. B. 
 
108 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 Specification 
 construed 
 favourably to 
 inventor. 
 
 Not with object 
 of setting aside 
 patent. 
 
 Nothing to be 
 intended for or 
 against patent. 
 
 Intention of 
 patentee to be / 
 looked to. ■ / 
 
 Formerly specifications were construed more strictly 
 against the inventor than they are now, the reason 
 being that a patent was looked upon as a monopoly pre- 
 judicial to the public interest. In Hullett v. Sague/a) 
 Lord Tenterdenj 0. 3., said, " I cannot forbear saying 
 that I think a great deal too much critical acumen has 
 been applied to the construction of patents, as if the object 
 was to defeat and not to sustain them." 
 
 The rule now followed is, 'that specifications are to be 
 read in a spirit of fairness and candour, not astutely with 
 the defect of setting aside the patent,(6) but on the prin- 
 ciples of good faith.(c) 
 
 In Stevens v. KeaUng,(d) Sir F. Pollock, C.B., said: "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 anything against it." 
 
 In Palmer v. Wagstaff,{e') the same learned judge 
 said, "A patent should be construed in the sense in 
 which the patentee intended, and if any expressions 
 are ambiguous, the Court will endeavour to give effect 
 to the intention, and wiU expound the patent favourably, 
 to the patentee. But the Court wiU. not violate the 
 obvious meaning of the language, unless it. is quite clear 
 that the patentee intended something different from that 
 which the expressions indicate." 
 
 168 ; Newton v. FaucAer,"6 Exch. 
 864 ; Crossley v. Beverley, 3 C. 
 & P. 514 ; 1 Webs. P. R. 117 ; 
 H<rusehill Iron Co. v. Neilson, 
 1 Webs. P. K. 679 ; Neilson v. 
 Harford, 8 M. & W. 323; 1 
 Webs. P. E. 312 ; Russell v. 
 Cowley, 1 Webs. P. R. 470. 
 (a) 2 B. & Ad. 377., 
 
 (6) Bichford v. SheweSj, 1 Q. 
 B. 951 ; 1 Webs. P. R. 219 ; Stead 
 V. Anderson, 2 Webs. P. R. 153 ; 
 Sellers v. Dickenson, 5 Exch. 326. 
 
 (c) Neilson v. Harford, \ 
 Webs. P. R. 341 ; Hussell v 
 Cowley, 1 Webs. P. E. 470. 
 
 (d) 2 Webs. P. R. 187. 
 
 (e) 9 Exch. 501. --^^ 
 
THE SPECIFICATION. 109" 
 
 . "TL:erecanbeiioriileoflaw/'saidSirN.C.Tindal,C.J., Chap. iv. 
 "■which, requires the Court to make any forced construc- 
 tion 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, (a) 
 
 In Turner v. Wmter,{b) Buller, J., said : " Many cases Must be fair 
 upon patents have arisen within our memory, most of '^'^''°™^- 
 which have been decided against the patentees, upon the 
 ground of their not having made a full and fair discovery 
 of their inventions. {Whenever it appears that the 
 patentee has made a fair disclosure, I have always had a j_ 
 strong bias in hia favour, because, in that case, he is 
 entitled to the protection which the law gives him ;F and 
 in Gart'wright v. Arnott,(e) Lord Eldon said that jiatents^) 
 were to be considered as bargains between the inventors C\ ,r, / , 
 and the public, to be judged of on the principle of keep- 1 
 ing good faith, by making a fair disclosure of the inven- j 
 tion, and to be construed as other bargains. 
 
 Any objection must be clearly made out.(dl) After a Objections "^ 
 patent has stood inquiry and the test of time, the Court made out, and 
 do not encourage verbal objections to the specification.(e) tiona^dis-^^"" 
 " The patentee should not be tripped up by captious ob- J°^^^s«^- 
 jections, which do not go to the merits of the specifica- 4 
 tipn."(/) ^' 
 
 (a) Haioorth -v. Hardcastle, 1 (d) Bickford v. Skewes, 1 Q. 
 
 Webs. P. K. 485. ' B. 951 ; 1 Webs. P. E. 219. 
 
 (S) 1 T. E. 606 ; 1 Webs. P. (e) Neilson y. Setts, L. E. 5 
 
 R. 81. H. L. 1 ; Muntz v. Foster, 2 
 
 (c) Easter Term, 1800, cited Webs. P. E. 95. 
 
 11 East. 107. (/) Per Alderson, B., in ilfor- - 
 
110 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 Evident mis- 
 take or misuse 
 of words not 
 vitiate speci- 
 fication. 
 
 Nor use of 
 scientific teims. 
 
 All evident mistake will not vitiate a specification, as 
 where air was described as "an imponderable sub- 
 stance /^(a) nor wiU the misuse of words vitiate a specifi- 
 cation. Thus, where the patentee, a foreigner, used the 
 word " baked " for boiling, and the word " discolorar- 
 tion" for discharge from colour, it was held that the 
 specification was not to be avoided on that account. Lord 
 Abinger, C.B., saying, "One would not be disposed, 
 from any obscure word in the specification, which might ' 
 be interpreted in favour of the patentee, to deprive him 
 of his patent;" (6) and the specification will be sufiScieht, 
 if, although foreign words are used in it, skilful mechanics 
 can make the machine with the assistance of the drawings 
 annexed, (c) 
 
 The use of scientific terms, unintelligible to ordinary 
 workmen, will not vitiate a specification. " Where,'' said , 
 Lord Abinger, "a specification uses scientific terms, 
 which are not understood, except by a person acquainted - 
 with the nature of the business, the specification is not 
 bad because an ordinary man does not understand it, 
 provided a scientific man does ; but where the specifica- 
 tion 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."(c?) 
 
 gan V. Seaward, 1 Webs. P. R. 
 174. 
 
 (a) Neilson v. Harford, 1 
 Webs. P. R. 340. 
 
 (6) Derosne v. Fairie, 2 C. M. 
 & E. 476 ; 1 Gale, 109 ; 1 Webs. 
 
 P. R. 157 ; Mtnter v. Mower, 1 
 Webs. P. R. 141. 
 
 (c) Bloxamv. Ehee, 1 C. & P. 
 563. 
 
 (d') Neilson v. Harford, 1 
 Webs. P. R. 341. 
 
THE SPECIFICATION. HI 
 
 The terms of a specifica/tion are to be construed according Chap. iv. 
 to tlie state of knowledge at the time it was drawn up.(a) g '^T~IT '.^ 
 
 The language of the specification is the language of ^^ construed ^ 
 the patentee_himself ;(6) and the words used in it are to state of know- 
 
 1 T T 1 . ledge when 
 
 be construed accordmg to their ordmary and proper drawn. 
 meaning,(c) and a fair and reasonable interpretation given ^^"S?*^j| °^- \ 
 to them, unless there is something in the context, which language of 
 
 - mTeHtor.-, 
 
 may be explained by evidence, to show that there ought Words con- 
 to be a different construction. (cZ) In Elliott v. Turn6r,{e) according 
 the specification stated that part of the invention con- meaning, 
 sisted in "the application of sudh fabrics only wherein 
 the ground or face of the ground thereof is produced 
 by a warp of soft or organizing silk, such as is used 
 in weaving satin arid the classes of fabrics produced 
 therefrom, which are well known, viz., satin ground, 
 with ornamental centre figure, &o. ; " and the pa- 
 tentee claimed as his invention the application of such 
 figured, woven fabrics to the covering buttons with 
 flexible shanks, made by pressure in dies, as have the 
 ground, or the face of the ground, woven with soft or 
 organizine silk for the Warp, when such fabrics have 
 ornamental designs or figures for the centre of but- 
 tons. Parke, B., in delivering the judgment of the 
 Court, said : " The word ' or' in its ordinary and proper 
 sense, is a disjunctive particle; and the meaning of the 
 term 'soft or organizine ' is, properly eigier^ne or the 
 other ; and so it ought to be construed, unless there be ^ 
 something in the context t6 give it a different meaning." 
 
 (a) Crossley v. Beverley, 3 (c) HouseUll Iron Co. v. 
 
 C. & P. 514 ; 1 Webs. P. K. Neilson, 1 Webs. P. R. 679. 
 
 107. (d) Beard v. Egertm, 8 0. B. 
 
 (S) R. V. WheeUr, 2 B. & Aid. 163. 
 
 349, (e) 2 C. B. 446. 
 
112 THE SPECIFI CATION. 
 
 Chap. IV. In Svmpson V. HolUday(a) the invention described by 
 
 the patentee consisted in the mixing of aniline with dry 
 arsenic acid for the purpose of producing a rich purple 
 colour; and the patentee, after describing that process, 
 added : " Or I accelerate the operation by heating it to 
 or near to its boiling point." It was proved that mixing : 
 aniline with dry arsenic acid, without the application of 
 heat, would not produce any effectual result'. It was 
 contended that the word " or " ought to be read " and ;" 
 but the House of Lords, affirming the decision of Lord 
 Chancellor Westbury, held there were two operations de- 
 scribed in the specification, and that there was nothing 
 in the terms of the description, nor uponihajfeiOjB...of the^ 
 .specification itself, which could justify the Court in - 
 changing the form of the expression. 
 Construction of The construction of the specification is the duty of the 
 
 specification is „ 
 
 for the Court, Court after the meaning of any terms of art or of com- 
 art ejKplained merce has been ascertained by the jury. (6) In Neilson v. 
 tyjiiry. ^ Earford,{c) Parke, B., said: "The construction of the 
 specification, as of aU written instruments, belongs to the 
 Court alone, whose duty it is to construe all such instru- 
 ments as soon as the true meaning of the words in which 
 they are couched, and the surrounding circumstances, if 
 any, have been ascertained by the jury ; and it is the . 
 duty of the jury to take the construction from the Court 
 either absolutely, if there be no words to be construedas 
 words of art or phrases used in commerce, and no sur- 
 roixndiag, circumstances to be ascertained ; or condition- 
 ally when the words or circumstances are necessarily 
 
 (a) 13 W. K. 577, on app., L. rosne v. Fairie, 1 Webs. P. R. 
 R. 1 H. L. 315. 156. 
 
 (b) Hill T. Thompson, 3 Mer. (c) 8 M. & W. 823 ; 1 Webs. 
 626 ; 1 Webs. P. E. 237 ; Be- P. R. 370. 
 
THE SPECIFICATION. H3 
 
 referred to them;" and in Hills v, Evans (a) Lord Chap. IV. 
 
 Westburylaiddownthe rale as follows: ''It is undoubtedly 
 
 true aa a proposition of law that the construction of a 
 
 specification, as of all other written instruments, belongs to 
 
 the court ; but the specification of an invention contains 
 
 most generally, if not always, some technical terms, some 
 
 phrases of art, some processes, and requires generally the . 
 
 aid of the light derived from what are called surrounding 
 
 circumstances. It is, therefore, an admitted ru[e'"onaw 
 
 thaF the explanation 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) 
 
 — that aU these are matters of fact upon which evidence 
 
 may be given, contradictory testimony may be adduced, 
 
 and upon which, undoubtedly, it is the province and 
 
 the right of a jury to decide. But when those portions 
 
 of a specification are abstracted and made the subject of 
 
 evidence, and therefore brought within the province of 
 
 the jury, 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 given 
 
 only conditionally ; that is to say, a direction as to the 
 
 meaning of the patent upon the hypothesis or the basis 
 
 of the jury arriving at a certain conclusion with regard 
 
 to the meaning of those terms, the signification of those 
 
 phrases, the truth of those processes, and the result of 
 
 the technical procedure described in the specification."(Z>) 
 
 (a) 4 De G. F. & J. 288 ; 8 v. Menzies, 10 H. L. 0. 153 ; 
 
 Jur. (N. S.) 527. Spencer v. Jack, 11 L. T. QS. S.) 
 
 (j) See too Bovill v. Pimm, 242 ; Thomas v. Foxutell, 6 Jur. 
 
 11 Exch. 719 ; Simpson v. Holli- (N. S.) 271. 
 day, L. K. 1 H. L. 320 ; Betts 
 
114 THE SPECIFICATION. 
 
 Chap. IV. Where in a specification terms of trade are used, they 
 TeiMrfteade ™"^* ^® construed according to their ordinary commer- 
 to be used in cial meaning. Thus where a specification described the 
 
 ordinary com- ° '■ 
 
 merciai sense, articles used as " the best selected copper " and ' that 
 quality of zinc known in England as foreign zinc/' it was 
 held, that what the patentee was endeavouring to describe 
 for the information of the public was, that the copper and 
 zinc should be of the best kind which at that time were 
 known to exist and were represented by that description 
 of each respective article, and that the patent was not 
 void because ''best selected copper" was well known 
 before the patent was granted, and that " foreign zinc " 
 was no longer made •,(a) and in Stevens v. Keating,(h) Sir 
 F. PoUock said that a claim for the use of " acids " would 
 not vitiate the patent if some very unimportant acids 
 known only in the laboratory would not answer the pur- 
 pose, but that it was otherwise when an acid well known 
 in trade was useless. 
 
 But where one of the ingredients in a composition was a 
 white substance imported from Germany, and which could 
 only be purchased at one or two colour shops in London, 
 and the only description given of it in the specification 
 was " the purest and finest chemical white lead, " and there 
 was no article known by that name in the trade, or in the 
 shops where white lead is usually sold, and the finest white 
 lead which could be obtaiaed would not answer the pur- 
 pose, it was held that the specification was insufficient.(c) 
 
 Identical terms In construing similar specifications of different dates, 
 
 of art may 
 
 have dififerent it must be remembered that it is possible that the terms 
 Sfeenf dates, of art used, although identical, may have different mean- 
 
 (a) Muntz v. Foster, 2 Webs. (c) Sturtz v. De la Rue, 5 
 
 P- R- 104. Russ. 322 ; 1 Webs. P. R. 83, n. 
 
 (5) 2 Webs. P. R. 187. 
 
THE SPECIFICATION. 
 
 115 
 
 Chap. IV. 
 
 ings owing to the advance of science, and it is necessary, 
 therefore, to ascertain whether or not this is so by evid- 
 ence. In Betts V. Menzies,(a) where the patent was 
 objected to on the ground of prior publication in a speci- 
 fication, the following question was put to the judges : 
 "■ Can the court pronounce B's patent to be void, simply 
 on the comparison of the two specifications without 
 evidence to prove identity of invention ?"- The answer 
 of the judges was in the negative, and Lord Westbury 
 in moving the judgment of the House, said that the 
 answer showed that " even if there is identity of language 
 in two specifications, and (remembering that those speci- 
 fications describe external objects) even if the language is 
 verbatim the same, yet if there are terms of art found in 
 the one specification, and also terms of art found in the 
 other specification, it is impossible to predicate of the 
 two with certainty that they describe the same identical 
 external object, unless you ascertain that the terms of art 
 used in the one have precisely the same signification and 
 denote the same external objects at the date of the one 
 specification as they do at the date of the other." 
 
 After the meanings of the terms of art have been Comparison of 
 ascertained by the jury and the Court has put the is question for 
 legal construction upon the specifications, there still ^"'•''" 
 remains the comparison of the specifications, which is the 
 duty of the jury. In Sills v. Evans,(b) Lord Westbury 
 said: "As it is always a matter of evidence what external 
 thing is indicated and denoted by any description, when 
 the jury have been informed of the meaning of the 
 description contained in each specification, the work of 
 
 (a) 10 H. L. 0. 117. 
 
 (S) 4 De G. F. 
 Jur. (N. S.) 527. 
 
 J. 288; 8 
 
116 THE SPECIFICATION, 
 
 Chap. IV. comparing the two and ascertaining whether the words 
 (as interpreted by the Court) contained in specification 
 - A, do or do not denote the same external matter as the 
 words (as interpreted and explained by the Court) con- 
 tained in specification B, is a matter ,.of_^t, and is, I 
 conceive, a matter within the province of the jury and not 
 within the function of the Court," (a) and his lordship also 
 said that the observation of Lord Cranworth in Bush v. 
 Fox, (&) " that it is the duty of the Court to compare the two 
 specifications together" is an obiter dictum, and cannot be 
 taken as a declaration of the law. 
 Unless there is But where the want of novelty appears distinctly on the 
 go to the^j^y. face of the specification, and the question of novelty de- 
 pends solely on its construction, and no evidence of fact is 
 required, and there is no question to go to the jury, then 
 it is for the Court to determine the identity of the inven- 
 tions. In Seedy. Higgins,{c) Lord Campbell said: "Where 
 novelty or infringement depends merely on the construc- 
 tion of the specification, it is a pure question of law for 
 the judge ; but where the consideration arises, how far one 
 machine imitates or resembles another in that which is the 
 alleged invention, it generally becomes a mixed question 
 of law and fact, which must be left to the jury." 
 
 The specification of a patent for improvements in the 
 manufacture of gas, described the invention to consist in 
 the direct use of seeds, leaves, flowers, and beech nuts, 
 fruit, and other substances, and matters containing oil or 
 oily and resinous matter, and stated that the mode of 
 using the seed and constructing the apparatus might be 
 
 (a) See too Muntz v. Foster, M. & Gr. 411 ; 1 Webs. P. R. 
 2 Webs. P. R. 105 ; Walton v. 585, 597. 
 Potter, 4 Scott (N. R.) 91 ; 3 (J) 5 H. L. C. 707. 
 
 (c) 8 H. L. C. 261. 
 
THE SPECIFICATION. 117 
 
 the same as tlie apparatus used in the mode of making Cuav. IV. 
 
 gas from coal ; but that the inventor preferred placing the 
 
 seed in a red-hot retort, and the claim was " for making 
 
 gas direct from seeds and matters therein named for 
 
 practical illumination or other useful purposes instead of 
 
 making it from oils, resins, or gums, previously extracted 
 
 from such substances." It was proved that a patent had 
 
 previously been granted to A for improvements in artificial 
 
 light, the patentee using the residuary matter obtained in 
 
 the manufacture of fatty substances, and also the residuum 
 
 after the oil had been pressed from the seeds, such as oil 
 
 cakes, and also beech nuts, or mast, cocoa nuts, and all 
 
 others abounding in oil. The judge directed the jury to 
 
 find for the defendant, and it was held that the direction 
 
 was right, as the two patents were substantially the same 
 
 and it was the province of the court to take notice of the 
 
 identity apparent upon the written document, and the 
 
 consequent want of novelty, and that it was not necessary 
 
 to submit the question of novelty to the jury .(a) 
 
 Whether or not the description of the invention con- f^g^^^pg^igj, ° "^ 
 tained in the specification is intelligible is a matter of fact 'p^^^f^"^^ 
 for the jury to decide,(&) and their finding is conclusive.(c) jury. 
 
 In Walton v. Potter,(d) Sir N. C. Tiadal, C. J., said, 
 referring to the objection that the specification did not 
 particularly describe the nature of the invention : 
 " Generally speaking, the rule which is laid down upon 
 
 (a) Booth V. Kennard, 2 H. & (J) Hill v. Thompson, 3 Mer. 
 
 N. 84. See also Thomas v. Fox- 626 ; 1 Webs. P. R. 235 ; Wei- 
 
 well, 6 Jur. (N. S.) 37 ; 6 Jur. lington v. Bale, 7 Exch. 888 ; 
 
 (N. S.) 271 ; Allen v. Rawson, Morton v. Middleton, 1 Dec. of 
 
 1 C. B. 571 ; Tetley v. Boston, Ct. of Sess. 3rd series, 718. 
 
 2 C. B. (N. S.) 706 Hills v. (c) Bichford y. Skewes, 1 Q. 
 London Gas Light Co., 5 H. & B. 938 ; 1 Webs. P. K. 220. 
 
 N. 312. (d) 1 Webs. P. R. 595. 
 
118 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 / 
 
 'f Exaggerated 
 cases must be 
 discarded. 
 
 Sufficiency 
 only to be as- 
 ceitained by 
 experiment. 
 
 Specification 
 may be con- 
 stinied with 
 the aid ofplans 
 or drawings. 
 
 occasions where the sufficiency of the specification is 
 called in question is this — that as these specifications are 
 drawn by men who are more conversant Tvith the parti- 
 cular article thanjuriesj who are selected iadiscriminately 
 from the pubUc^ and certainly much more than judges 
 whose knowledge is confined to one particular department, 
 credit is given to witnesses if they are conversant with 
 the subject-matter of the invention, and they teU you and 
 you believe it that they see enough on the face of the 
 specification to enable them to make the article without 
 difficulty .... it always is a proper answer when a 
 patent is set up to say that you have not so described it 
 that it may not be understood." 
 
 /AH exaggerated cases on both sides must be discarded, 
 -and if the jury think in substance that the informa- 
 tion really communicated would be enough in aU ordinary 
 cases or in such cases as are likely to occur, the specifica- 
 tion will be sufficient, (a.) 
 
 Whether or not a specification contains a sufficient 
 description can only be ascertained by an experiment, and 
 in making the experiment, knowledge and means may be 
 employed which have been acquired since the date of the 
 patent .(6) 
 
 The specification may be read with the aid of plans or 
 drawings which will be considered part of it, so as to limit 
 the claim.(c) In Bloxam v. Elsee,{d) Abbott, C. J., said 
 
 (a) Morgan v. Seaward, 1 
 Webs. P. K. 180; Neihon v. 
 Baird, 6 Dec. of Ct. of Sess. 
 2ud series, 51. 
 
 (6) Betts V. Neihon, L. R. 3 
 Oh. 429. 
 
 (c) R. V. Arhwright, 1 Webs. 
 P. R. 71 ; Morgan v. Seaward, 
 
 lb. 178 ; Ex parte Fox, 1 V. & 
 B. 67; Morton v. Middleton, 1 
 Dec. of Ct. of Sess. 3rd series, 
 718 ; Daw v. Eley, 14 W. R. 
 126; 11 Jur. (N. S.) 923. 
 
 {d) 1 C. & P. 564. And see 
 Barber v. Grace, 1 Exch. 339. 
 
THE SPECIFICATION, 119 
 
 " 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 specifica- 
 tion, and if by a comparison of the words and drawings 
 the one wilf explain the other sufficiently to enable a 
 skilful mechanic to perform thework, such a specification 
 is sufficient." 
 
 But plans or drawings are not necessary. In Boulton But they are 
 V. Bull,(a) Eooke, J., said : " I am not aware of any rule 
 of law which requires a model or drawing to be setjorth, 
 or which makes void an intelligible specification of a 
 mechanical improvement merely because no drawing or 
 model is annexed." 
 
 If, however, in a patent for improvements the patentee Unless pa- 
 is unable to distinguish the new from the old parts of the distinguish 
 machine by words only, he must do so by reference to by^oXoniy. 
 plans or drawings. (6) 
 
 It is not necessary that the plans or drawings should Piansor draw- 
 
 . ings need not 
 
 \ be very skilfully executed or highly finished, it is enough be skilfully 
 
 6X6CUt)6d 
 
 ) if they would give an ordinary workman sufficient in- 
 formation to enable him to make the machine. (c) 
 
 A drawing alone may apparently be a sufficient specifi- Drawing 
 cation. In Brunton v. Hawlces,(d) Abbott, C. J., said that sufficient spe- 
 if a drawing or figure enabled workmen of ordinary skill 
 to construct the improvement it was as good as any written 
 description, and in Foxwell v. BostocTc,{e) Lord Westbury 
 said that a patent for a new machine might be good if 
 
 (a) 2 H. Bl. 480. (c) Bovill v. Moore, 2 Marsh. 
 
 (6) Macfarlane v. Price, 1 211 ; Dav. P. C. 368. 
 Stark. 201 ; 1 Webs. P. R. (d) Carp. P. K. 410. 
 
 74, n. (e) 4 De G. J. & S. 303 ; 10 
 
 L. T. (N. S.) 144. 
 
120 THE SPECIFICATION. 
 
 Chap. IV. the specification contained nothing but clear dra win gs 
 
 and a description of them. 
 
 If experiments The specification must be so clearly expressed as to 
 
 produce bene- enable the machine to be constructed or the process to be 
 
 specification performedj simply from reading the description without 
 
 the necessity of trying experiments. 
 
 In B. V. Wheeler, (a) Abbott, C. J., said that a specifi- 
 cation which casts upon the public the expense and labour 
 of experiment and trial is undoubtedly bad. There the 
 patent was for " a new and improved method of drying 
 and preparing malt." The specification stated that the 
 inyention consisted in exposing malt previously heated 
 to a very high degree of heat ; but it did not describe 
 any machine for this purpose, nor the state in which the 
 malt was to be taken for undergoing the process, whether 
 moist or dry, nor what was the proper amount of heat to 
 be applied, nor how it was to be known when the process 
 was completed and the patent was held to be void. 
 
 In Twmer v. Winter, (b) the specification directed heat 
 to be applied until the result aimed at was obtained. It 
 appeared that fusion was necessary, but it was not men- 
 tioned, and BuUer, J., said that the specification was defi- 
 cient for that reason. > 
 
 Where the patent was for " an improved method of 
 drying and finishing paper," and the specification de- 
 cribed the invention to consist in conducting paper by 
 means of cloth, or cloths, against a heated cylinder, and 
 contained these words : " which cloth may be made of 
 any suitable material, but I prefer it to be made of linen 
 warp or wooUen weft," the patentee knowing, from re- 
 peated trials, that no other substance would do. Lord 
 
 (a) 2 B. & Aid. 349. (J) I T. K. 607 ; 1 Webs. P. R. 81. 
 
THE SPECIFICATION, 121 
 
 Tenterden, C. J., said : " The patent was obtained for Chap. iv. 
 tlie discovery of a proper conducting medium. The 
 plaintiff found, after repeated trials, that nothing would 
 serve the purpose except the cloth described in his spe- 
 cification, yet he says the cloth may be made of any 
 suitable material, and merely that he prefers the parti- 
 cular kind there mentioned. 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." (a) 
 
 In B. V. Arkwright (b) a witness stated that he should, 
 from reading the specification, have made one part of the 
 machine differently from the same part in the patentee's 
 machine, but that from the knowledge he had acquired 
 by seeing the machine he could now make it properly ; 
 and Buller, J., said that it does not prove a specification 
 to be sufficient, that a man, from the knowledge he has 
 got from trials and from seeing people employed about 
 the machine, is able to make it. In Morgan v. Seawa/rd, (c) 
 Alderson, B., said: J^'The specification of a patent 
 must not merely suggest something that wiU set the 
 mind of an ingenious man at work, but it must actually 
 and plainly set forth what the invention is, and how it is 
 to be carried into effect so as to save a party the trouble 
 of making experiments and trials,'^nd his lordship said 
 that the criterion was whether at the time when the spe- 
 
 (a) Crompton v. Ibhetson, Dan. Oas Light Co., 9 Jur. (N. S.) 
 
 & L. 33 ; 1 Webs. P. R. 83. 140 ; Muntz v. Foster, 2 Webs. 
 
 See too Macnamara v. Hulse, 2 P. K. 109. 
 Webs. P. R. 128, n. ; Stevens v. (V) 1 Webs. P. R. 67. 
 
 Keating, 2 Bxch. 778 ; 2 Webs. (c) 1 Webs. P. R. 179 
 
 P. R. 194; Hills v. Liverpool 
 
122 
 
 THE SPECIFICATION. 
 
 Chap. IV. 
 
 Greatest effect. 
 
 Specification 
 must be 
 enough to 
 enable skilled 
 workmen to 
 make the ma- 
 chine or per- 
 form process. 
 
 Technical 
 words not ne- 
 cessary. 
 
 Amount of 
 skill neces- 
 sary. 
 
 Competent 
 skill. 
 
 cification was introduced to the world, a witness who had 
 been employed to make models for the patentee for the 
 purpose of the trial, would have been able to construct 
 the machine with his ordinary knowledge and skill, with- 
 out the peculiar knowledge he had since obtained from 
 his employment. But it appears that the specification 
 is not defective if the experiments are only necessary to 
 produce the greatest beneficial effect, (a) 
 
 The specification must be so clear as to enable skilled 
 workmen to make the machine or perform the process. 
 " It must/' said Lord EUenborough, " convey to the 
 public a corresponding advantage with that of the indi- 
 vidual whose sole right is protected, so that any person 
 who is skilled in the subject may accomplish the end." (&) 
 
 Technical words are not necessary so long as the spe- 
 cification shows the patent to be for a manufacture, and 
 enables a workman to make the machine, (c) 
 
 The amount of skill demanded from a workman em- 
 ployed to construct the machine depends entirely upon 
 the subject-matter of the invention.^ The specificati on," 
 said Lord Loughborough, " is addressed to persons in 
 the profession having skill in the subject, not to men 
 of ignorance j and if it is understood by those whose 
 business leads them to be conversant in such subjects, it 
 is inteUigible." ((^) )i^ 
 
 In Morgany. 8eaward,{e) iJderson, B., said: yAspeci- 
 
 (d) Neilson v. Harford, 1 
 Webs. P. R. 320. 
 
 (J) Hvddart v. Grimshaw, 1 
 Webs. P. K. 86; CHlson v. 
 Brand, 1 Webs. P. E. 629; 
 Betts V. Menzies, 8 El. & Bl. 
 937. 
 
 (c) Hornhlower v. Boulton, 8 
 T. R. 98 ; Boulton v. Bull, 2 
 H. Bl. 475 ; Minter v. Mower, 1 
 Webs. P. R. 141. 
 
 (d) Arkwrightv. Nightingale, 
 1 Webs. P. R. 176. 
 
 (e) 1 Webs. P. R. 176. 
 
THE SPECIFICATION. 
 
 123 
 
 fication is addressed to all the worldj and therefore all the | Chap. IV. 
 world, at least those possessed of competent skill, ought L 
 to be able to construct the machine by following that v 
 specification j'^and in Neilson v. Harford (a), Parke, B., ^ 
 said : " You are not to ask yourself the question whether 1 
 persons of great skill — a first-rate engineer or a second- 
 rate engineer — whether they would do it, because, gene- 
 rally, those are men of great science and philosophical 
 knowledge, and they would upon a mere hint in the spe- 
 cification probably iavent a machine which would answer 
 the purpose extremely well ; but that is not the descrip- 
 tion of persons to whom this specification may be sup- 
 posed 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." {b) 
 / >^ The specification has also been said to be addressed to Ordinary or 
 
 / / ^ tolerable skill. 
 
 ' persons of ordinary (c) or tolerable skiU. {d) X 
 •^ The specification must be such that workmen may be\ f P|';^add?tion 
 able to make the machine by followiug the directions Uy ■"''"•i™!™ 
 given, without any new inventions or additions of their r 
 own. )<^Where the patent was for spinning machinery, 
 and the specification said nothing as to the comparative 
 velocity of the rollers, BuUer, J., said : " The man that 
 comes to give an account of the invention says, ' I had 
 
 (a) 1 "Webs. P. R. 314. 
 
 (6) And see also Househill 
 Iron Co. V. Neilson, 1 Webs. 
 P. R. 692 ; Bickford v. Skewes, 
 1 Q. B. 938 ; 1 Webs. P. R. 218 ; 
 JElliott V. Aston, 1 Webs. P. R. 
 224; Galloway v. Bleaden, ib. 
 524 ; Walton v. Bateman, ib. 
 
 621 ; Beard v. Egerton, 8 C. B. 
 212. 
 
 (c) Stwrtz V. De la Rue, 5 
 Russ. 327; Foxwell v. Bostock, 
 10 L. T. (N. S.) 147. 
 
 (d) Manton v. Manton, Dav. 
 P. C. 349. 
 
/> 
 
 124 THE SPECIFICATION. 
 
 Chap. IV. calciilated it, and the difference of the Telocity was to be 
 
 as five to one ; this is the way I made my rollers.' Now 
 
 the defendant has not said a word of that in his specifica- 
 
 I f tion. In that he has kept back the knowledge he had 
 
 ! as to the size of the rollers, and velocity, "and it is left to 
 
 \ people to find it out, as chance may direct." (a) 
 
 In Morgan v. 8eward, (b) Alderson, B., said that people 
 in trade ought to be told the manner ia which the inven- 
 tion ought to be carried out, " not by themselves be- 
 coming inventors of a method of carrying it into effect, 
 but by following the specification without making a new 
 invention, or making a ny addit ion to the specification. 
 If the invention can only be carried into effect by persons 
 setting themselves a problem to solve, then they who 
 solve the problem become the inventors of the method of 
 solving it, and he who leaves persons to carry out his ia- 
 vention by means of that application of their understand- 
 ing, does not teach them in his specification that which, 
 in order to entitle him to maintain his patent, he should 
 teach them, the way of doing the thing, but sets them a 
 problem which, being suggested to persons of sMLl, they 
 may be able to solve. That is not the way in which a 
 specification ought to be framed^^xlt ought to be framed 
 so as not to call on a person to have recourse to more 
 than those means of ordinary: knovdedge (not invention) 
 which a workman of competent skill in his art or trade 
 may be presiuned to have. You may call on him to exer^ 
 cise all the actual existing knowledge common to his 
 trade, but you caimot call upon him to tax his ingenuity 
 or invention." \' 
 
 (a) R. V. Arhwright, 1 Webs. (b) 1 Webs. P. R. 174. 
 
 P. R. 66. See also R. v. Fussell, 
 1 Carp. P. R. 449. 
 
THE SPECIFICATION. 125 
 
 x>If the specification contains a false statement in any Chap. IV. 
 material circumstance of such a nature that if literally untme state- 
 acted upon by a competent workman it would mislead ment vitiates 
 
 ^ "' ^ specification 
 
 him^ and he would be unable to make the machine, it even if it 
 
 • Til 11 • • 1 would not 
 
 Will be void, although there is evidence to prove that it deceive work- 
 is not likely that competent workmen would be misled j 
 for this would be to support the invention by the work- 
 man's skill and not on its own merits, (a) ^ 
 
 But when in the specification of a patent for improve- \But omission 
 
 . . . . pot fatal if it 
 
 ments no directions are given respecting a portion of the floes not mis- 
 machine which any competent workman wpuldL.know_to. 
 be necessary, the specification will not be void. In 
 Orossley v. Beverley (6) the patent was for an " im- 
 proved gas apparatus," the specification omitted to state ( 
 that a condenser was necessary, but as it was shown that \ 
 any workman who was able to construct a gas apparatus / 
 would know that a condenser was necessary, the specifica-/ 
 tion was held to be good. 
 
 A deviation from the precise dimensions shown by the 
 specification and model, so as to make the different parts 
 work together, is within the knowledge of any workman. 
 Thus where the defendants put in a model made according 
 to the specification which would not work though a very 
 slight alteration would have made it work, Alderson, B., 
 said : " Now a workman of ordinary skill when told to 
 put two things together, so that they should move, would 
 of course by the ordinary knowledge and skill he pos- 
 sesses make them of sufficient size to move. There he 
 would have to bring to his assistance his knowledge that_ 
 
 (a) R. V. Arkwright, 1 Webs. 371 ; Simpson v. Holliday, L. R. 
 P. K. 67 ; Neilsm v. Harford, 8 1 H. L. 315. 
 M. & W. 824 ; 1 Webs. P. R. (6) 9 B. & C. 63; 3 C. & P. 
 
 515; 1 Webs. P. R. 110, n. 
 
126 THE SPECIFICATION. 
 
 Chap. IV. the size of the part is material to the working of the 
 machine. That is within the knowledge of every work- 
 man. He says : ' I see this wiU not work, because 
 it is too small/ and he makes it a little larger and finds 
 it will work ; what is required is that the specification 
 should be such as to enable a workman of ordinary skill 
 to make the machine ; with respect to that therefore I do 
 not apprehend you will find much difficulty .•'■' (a) 
 
 In Neilson v. Harford, (b) the specification of a patent 
 for " the improved application of air to produce heat in 
 fires, forges and furnaces where bellows or other blowing 
 apparatus are necessary/^ did not state that it was 
 necessary to use water twires in order to protect the 
 pipe conveying the hot air into the blast furnace. It 
 was proved that the blast could be used to a beneficial 
 extent without the water twires, and that any person 
 acquainted with smelting would apply them if necessary, 
 and the patent was held to be good. In Russell v. Oow- 
 ley, (c) the patent was for improvements in manufacturing 
 tubes for gas and other purposes without the use of a 
 maundril, which had always been used previously in the 
 manufacture of iron tubes. The specification did not 
 give any directions as to omitting the use of the maun- 
 dril, but it was held that on reading the specification apy 
 person of ordinary intelligence would see that the invention 
 was for the manufacture of tubes without a maundril. 
 / Where the specification is of a long and complicated 
 process consisting of several operations following one 
 another in regular order and the description as a whole 
 is sufficient, it will not be void because of some obscurity 
 
 (a) Morgan v. Seaward, 1 also Househill Iron Co. v. Neil- 
 Webs. P. R. 176. son, ib. 687. 
 
 (&) 1 Webs. P. R. 318. See (c) 1 Webs. P. R. 457. 
 
THE SPECIFICATION. 127 
 
 in a part of tte description wliicli would not mislead a Chap. IV. 
 competent workman. J In 5ear(?v. B^eriom, (a) the patent 
 was for " a new and improved mode of obtaining the 
 spontaneous reproduction of all the images received on 
 the focus of the camera obscura." The specification 
 stated that the process was divided into five operations. 
 " The first consists in polishing and cleaning the silver 
 surface of the platOj in order to properly prepare or 
 qualify it for receiving the sensitive layer or coating 
 npon which the action of the light traces the design. 
 The second operation is, 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 fourth in bringing out or making appear the image, 
 picture or representation, which is not visible when the 
 plate is first taken out of the camera obscura. The fifth 
 and last operation is that of removing the sensitive layer 
 or coating which would continue to be affected, and 
 undergo different changes from the action of Hght, this 
 would necessarily tend to destroy the design or tracing 
 so obtained in the camera obscura." A description was 
 then given of the first operation, preparing the silver 
 surface of the plate; the concluding part of which 
 directed that nitric acid dissolved in water was to be 
 applied three different times, care being taken to sprinkle 
 the plate each time with powder, and rub it dry and very 
 lightly with clean cotton. No objection was made to 
 this part of the specification, but some further informa- 
 tion was given respecting the preparation of the plate as 
 follows : " When the plate is not intended for immediate 
 use or operation, the acid may be used only twice upon 
 (a) 8 C. B. 214. 
 
128 THE SPECIFICATION. 
 
 Chap. IV. ita Surface after being exposed to heat. The first part of 
 the operation, that is, the preparation as far as the second 
 application of the acid, may be done at any time ; this 
 will aUow 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 aU pounce dust 
 which may be on the surface or its edges." Upon this 
 part of the specification it was contended that the direc- 
 tion to apply acid just before the moment of using the 
 plates in the camera (which was the third operation) 
 was a direction to use it after the second operation, viz. 
 the coating the plate with iodine ; and that using acid 
 at that period would entirely spoil the whole process. 
 It was held however that the specification was free from 
 any such mistake or obscurity as would mislead a person 
 of fair intelligence. ''It must be remembered,'^ said 
 Sir T. WUde, C. J., " that the passage in question is part 
 of the directions given for performing the first operation, 
 viz. preparing the plate to receive the iodine. It is to 
 be observed when the plate is not intended to be used 
 immediately, and where it has previously been partially, 
 but not entirely, prepared for the iodine, this last appli- 
 cation of acid is stiU to precede the second operation. 
 The whole passage may be considered as in a paren- 
 thesis; and the expression, ''just before the moment of 
 using the plate in the camera," is put in opposition to 
 the time of partially preparing the plate ; after which it 
 is supposed to have been laid by for future use. That 
 this is the real meaning of the passage, is further mani- 
 
THE SPECIFICATION. 129 
 
 fested by wtat follows in a subsequent part of the ^"^^- ^^■ 
 printed specification. ' After this second operation (viz. 
 the application of iodine) is completed, the plate is to be 
 passed to the third operation, or that of the camera 
 obscura. Wherever it is possible, the one operation should 
 immediately follow the other .■" It is plain therefore that 
 the patentee did not intend any separate operation to 
 intervene between the application of iodine and the in- 
 troduction of the plate into the camera obscura. The last 
 application of acid must therefore have been intended to 
 precede the second operation. 
 
 " This we think is the fair construction of the language "\ 
 of the specification. And although there may at first \ 
 sight be some appearance of obscurity in it, we think V 
 that it is cleared away by a construction of the whole ; [ 
 and that it is sufficient to be understood by an operator / 
 of fair intelligence." 
 
 But the omission must appear distinctly on the face of The omission 
 
 _ _ miist be patent. 
 
 the specification and drawings. In Simpson v. Solli- 
 day (a) Lord Westbury said, " When it is stated that an 
 error in a specification, which any workman of ordinary 
 skill and experience would perceive and correct, wiU not 
 vitiate a patent, it must be understood of errors which 
 appear on the face of the specification or the drawings it 
 refers to, or which, would be at once discovered and cor- 
 rected in following out the instructions given for any 
 process or manufacture, and the reason is, because such 
 errors cannot possibly misleads xBut the proposition is 
 not a correct statement of the law if applied to errors 
 which are discoverable only by experiment and further ^ 
 neither is the proposition true of an erroneous 
 
 (a) 13 W. R. 577. 
 
130 THE SPECIFICATION, 
 
 Chap. IV. /^statement in a specification amounting to a false sug- 
 ( gestionj even though the error would be at once observed 
 I by a workman possessed of ordinary knowledge of the 
 J subject. )^or example, if a specification describes several 
 processes or several combinations of machinery and affirms 
 that such will produce a certain result, which is the object 
 of the patent, and some one of the processes or combina- 
 tions is wholly ineffectual and useless, the patent wiU 
 be bad, although the mistake committed by the patentee 
 may be such as would at once be perceived by an ordinary 
 workman." 
 Evidence. The Court may, in the exercise of its discretion, refuse 
 
 to consider questions arising on the construction of the 
 specification until the evidence on the whole of the case 
 has been heard, (a) 
 / The evidence of persons who say that they could not 
 / make the machine from the specification, and that they 
 \ think it is not probable that the person who drew the 
 specification meant to describe the invention is nothing 
 / more than a corollary from their own opinion, because it 
 (' is not intelligible to them. (&) 
 
 (a) Young v. Femie, 4 Giff. (6) Arkwrigkt v. NighMngale, 
 
 577. 1 Webs. P. K. 61. 
 
CHAPTER V. 
 
 OF DISCLAIMERS. 
 
 T) BPORE the year 1835 a patentee whose specification Chap. v. 
 -*-^ was void by reason of unnecessary matter having g ^ ev/m 
 been introduced into it, was unable to obtain any relief, V^- "■ ^^• 
 
 ■' ' Any person 
 
 although his invention might in other respects be meri- having ob- 
 
 fiRiDpn. ipttpi'fl 
 
 torious. By 5 & 6 Will. IV. c. 83, s. 1, it was provided patent for any 
 that " any person who as grantee, assignee, or otherwise enter a dis- 
 hath obtained, or who shall hereafter obtain, letters patent anypait°of 
 for the sole making, exercising, vending or using of any tion^OTamemo- 
 invention, may, if he think fit, enter with the clerk of ™n<luin of 
 the patents of England, Scotland, or Ireland, respectively therein, 
 as the case may be, having first obtained the leave of His 
 Majesty's Attorney-General or Solicitor- General in case 
 of an English patent, or of the Lord Advocate or Solicitor- 
 General of Scotland in the case of a Scotch patent, or of 
 His Majesty's Attorney-General or Solicitor- General for 
 Ireland in the case of an Irish patent, certified by his 
 fiat and signature, a disclaimer of any part of either the 
 title of the invention or of the specification, stating the 
 reason for such disclaimer, or may with such leave as Reasons must 
 aforesaid enter a memorandum of any alteration in the ^ stated, 
 said title or specification, not being such disclaimer or 
 such alteration as shall ' extend' the exclusive right 
 granted by the said letters patent." 
 
132 DISCLAIMERS. 
 
 Chap. V. The reason for a disclaSmer is no part of the disclaimer 
 
 itself, (a) 
 Meaning of The word " extend " in the above section cannot be 
 
 word " ex- 
 tend." used in its ordinary sense of " adding to" or " enlarging, 
 
 because the exact meaning of the term " disclaimer/' to 
 which it is applied, is the renunciation of some previous 
 claim actually made or apparently made or supposed to 
 be made. It must, therefore, be intended to compre- 
 hend a case where the disclaimer would give the patentee 
 a right which he could not have enjoyed under the 
 specification as originally framed. (&) 
 Object of the The object of the act is that where a specification is 
 
 necessaiy void for claiming too much, the patent is not necessarily 
 
 straolt ontf ^ *o ^^ avoided, but may be amended by disclaiming the 
 useless part; that is to say, if there is a general claim and 
 a particular claim, and by a disclaimer the general claim 
 is struck out, the particular claim may be good. " The 
 spirit of the Act," said Maule, J., " 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 reKeve himself 
 from the difficulty by a disclaimer." (c) In Balston v. 
 Smith {d] the law was very fully laid down by Lord 
 Westbury, who said, " The object of the Act authorizing 
 disclaimers was plainly this, that when you have in your 
 specification a sufficient and good description of a useful 
 invention, but that description is imperilled or hazarded 
 by something being annexed to it which is capable of 
 
 (a) Cannington v. Nuttall, L. stock, 4 De G. J. & S. 306 ; 10 
 
 R, 5 H. L. 227. L. T. (N. S.) 144. 
 
 (V) Per Lord Chelmsford in R. v. Mill, 10 C. B. 395. 
 
 RaUm V. Smith, 11 H. & C. (d) \\ H. L. C. 243. 
 254. See also Foxwell v. Bo- 
 
DISCLAIMBES. 133 
 
 being severed, leaving the original description in its Chap. v. 
 integrity, good and sufficient without the necessity of 
 addition, then you might, by the operation of a dis- 
 claimer, lop off the vicious matter and leave the original 
 invention as described in the specification untainted and 
 unimpaired by that vicious excess. But it was never Butbadspeci- 
 intended that you should convert a bad specification, in the be made good 
 sense of its containing no description of any -useful in ven- ■s^^ds."'^ 
 tion at all, into a good specification by adding words that 
 would convert a barren and unprofitable generality into a 
 specific and definite and practical description. It is quite 
 clear that if that could be done you would have an oppor- 
 tunity of introducing into a bad patent which contained 
 no useful invention whatever, some discovery that might 
 be developed by further experiment and which was alto- 
 gether unknown at the time of the original specifica- 
 tion and not at aU included in the description contained 
 in it. 
 
 But a further observation occurs upon this, that not 
 only was it never intended by the statute that a patentee 
 should take advantage of it for the purpose of converting 
 a bad description into a good description in this sense, 
 or that when the original description was wholly bad 
 and contained no new invention it should be converted 
 into a description containing a good invention; but 
 the statute never contemplated that a patentee should 
 have the power under the form of a disclaimer of making 
 material additions to the original specification, so as by 
 the aid of the corrected form of words and the additions 
 so made to introduce into the specification an accurate 
 and perfect description of an invention, which you seek 
 for in vain in the original specification." 
 
 In this case the patent was for " improvements in em- 
 
134 DISCLAIMEES. 
 
 Chap. V. bossing and finisliing woven fabrics^ and in the maolunery 
 employed therein," and in the specification the patentee 
 said : " I employ a roUer of metal, wood, or other suit- 
 able material, and groove, flute, engrave, miU, or other- 
 wise indent upon it any desired design." If the design 
 were engraved longitudinally the material would be de- 
 stroyed. The patentee afterwards entered a disclaimer 
 by which he disclaimed the latter portion of the words of 
 the title, and the use of any pattern rollers except those 
 having circular grooves around their surfaces. It was 
 held that the disclaimer was bad, as the specification was 
 originally drawn up in general terms, and the disclaimer 
 sought to extend the right by describing the alleged in- 
 vention so as to enable the patentee to assert a right 
 under the patent which he could not have maintained 
 upon the original specification alone. 
 
 In Seed v. Miggins{a) the patentee claimed by his spe- 
 cification " the application of the law or principle of cen- 
 trifugal force to the flyers employed" in certain ma- 
 chinery for roving cotton, and described how the force 
 was to be applied. He afterwards disclaimed ''all appli- 
 cation of the law or principle of centrifagal force as being 
 part of my said invention, or as being comprised in my 
 claim of invention contained in the said specification, ex- 
 cept only the application of centrifugal force by means of 
 a weight acting upon a pressure so as to cause it to press 
 against a bobbin, as described in the specification." Lord 
 Cranworth said : " I think we must understand the pa- 
 tentee to have said that he claimed as his invention the 
 application of centrifugal force to the flyers, as described. 
 But then he did not confine himself to that mode ; he 
 
 (a) 8 H. L. C. 550. 
 
DISCLAIMERS. 135 
 
 claimed, further, the application of the principle of cen- Chap. v. 
 trifagal force to flyers used in machinery for preparing 
 and roving cotton, in whaterer way it might be applied. 
 The effect of the disclaimer was to strike out of the spe- 
 cification this latter general claim, leaving only the claim 
 for the particular mode of application specially de- 
 scribed." 
 
 In B. V. Mill (a)- the title of the patent was for " im- 
 provements in instruments used in writing and marking, 
 and in the construction of inkstands.^' The specification 
 described eleven heads of invention, some of which were 
 void for want of novelty and utiKty. The patentee dis- 
 claimed " all those parts of my said invention which are 
 respectively described and claimed in the said specifica- 
 tion as being the fifth, the sixth, the seventh, and the 
 eighth parts of the said invention." These claims re- 
 lated to pens and instruments used for marking with a 
 stamp. The remainiug claims were for improvements in 
 pen-holders and pencil-cases, and in the construction of 
 inkstands, and it was held that as the specification as 
 amended by the disclaimer described improvements in 
 instruments used in writing and marking, viz., pens and 
 pencils, and improvements in the construction of ink- 
 stands, the title was satisfied by the specification so 
 amended. 
 
 AH the claiming clauses may be struck out of the spe- All claiming 
 
 cification by a disclaimer, if there remain in the body of struck out. 
 
 the specification words sufficiently distinguishing what 
 
 the invention is which the patentee claims, (b) 
 
 The effect of a disclaimer is merely to strike out from Effect of dis- 
 
 1 ■ 1 claimer. 
 
 the specification those parts of the mvention which are 
 
 10 C. B. 379. (6) Thomas v. Welch, L. R. 1 C. P. 192. 
 
136 DISCLAIMERS. 
 
 Chap. V. disclaimed; it cannot be read as explanatory of that 
 wMcli remains, (a) An alteration verbal merely, and not 
 substantive, wiU not make a patent void, (b) It is not 
 necessary to disclaim matters which manifestly form no 
 part of the invention, (o) The effect of the statute is to 
 render the disclaimer, when made, part of the patent and 
 specification ; and the patentee, from the moment of the 
 disclaimer, becomes patentee of the undisclaimed part 
 on\j.{d) 
 Disclaimer The disclaimer, or memorandum of alteration, beingfiled 
 
 be deemed pai-t with the specification, is to be deemed and taken to be 
 tion^^" ''°" part of such letters patent or such specification in all 
 courts whatever, (e) Formerly disclaimers were required 
 to be enrolled, but it is now provided that disclaimers 
 and memoranda of alteration shall be filed in the office 
 appointed for filing specifications in Chancery, with the 
 specification to which they relate, instead of being en- 
 tered or filed and enrolled, as provided in the principal 
 Act, and in the Act 12 & 13 Vict. c. 109. (/) 
 
 The disclaimer operates as part of the letters patent 
 and specification fi:om the date of the grant, {g) There is 
 no express enactment in the statute that the disclaimer, 
 if it transgresses the statutory limit by extending the 
 exclusive right, shall be void to all intents and purposes ; 
 and unless it be so it must remain enrolled with and al- 
 
 (a) Teiley v. Easton, 2 C. B. (af) Clark v. Kenrick, 12 M. & 
 
 (N. S.) 706. W. 219. 
 
 (6) Thomas V. Welch, L. K. 1 (e) 5 & 6 WiU. IV. c. 83, 
 
 C. P. 192. s. 1. 
 
 (e) Lister v. leather, 8 E. & (/) 15 & 16 Vict. c. 83, s. 39. 
 
 B. 1004 ; Morton v. Middleton, (§■) R. v. Mill, 10 C. B. 
 
 1 Dec. of Ct. of Sess. 3rd series, 379 ; Stocker v. Warner, 1 C. B. 
 
 718. 148. 
 
DISCLAIMERS. 137 
 
 ways accompany the letters patent and specification. It Chap. v. 
 might be proper to hold that the disclaimer is inoperative 
 for the excess only when that excess is clearly distin- 
 guishable, (a) 
 
 The filing of a copy of the disclaimer. is a compliance Filing of copy 
 with the provisions of the Act. (&) sufficient. 
 
 The Act of the 5th & 6th WiU. IV. c. 83 only gave the rks Vict, 
 patentee the right to disclaim, and as it was considered °' ^^' ^' *• 
 doubtful whether the assignee of a patent could enter a 
 disclaimer, it was by the 7th & 8th Vict. c. 69, s. 5, Disclaimer and 
 enacted, — " that in case the original patentee or patentees of alteration 
 hath or have departed with his or their whole or any StYouirthr'* 
 part of his or their interest, by assignment to any other °^'^l^' 
 person or persons, it shall be lawful for such patentee, to- ^?"^^ assigned 
 gether with such assignee or assignees, if part only hath right. 
 been assigned, and for the assignee or assignees if the 
 whole hath been assigned, to enter a disclaimer and 
 memorandum of alteration under the powers of the prin- 
 cipal Act ; and such disclaimer and memorandum of such 
 alteration, having been so entered and filed as in the said 
 recited Act mentioned, shall be valid and effectual in fa- 
 vour of any person or persons in whom the rights under 
 the said letters patent may then be or thereafter become 
 legally vested; and no objection shall be made in any 
 proceeding whatsoever on the ground that the party 
 making such disclaimer or memorandum of such altera- 
 tion had not sufl&cient authority in that behalf.'^ 
 
 Under the latter part of this section it was held that a 
 disclaimer will be vaUd, although the patentee at the 
 
 (a) Per Lord Westbury in (6) Wallington v. Dale, 7 
 
 Foxwell V. Bostock, 4 De G. J. Exch. 888. 
 & S. 307 ; 10 L. T. (N. S.) 144. 
 
138 DISCLAIMERS. 
 
 Chap. V. time he entered it had assigned all his interest in the 
 
 patent, (a) 
 
 FUing to be By the Patent Law Amendment Act (15 & 16 Vict, 
 
 conclusive as ... . 
 
 to the right of c. 83j s. 39) it is provided " that such filing of any dis- 
 the pai'ty. . . . . 
 
 claimer or memorandum of alteration in pursuance of the 
 
 leave of the law officers as in the principal Act men- 
 tioned, certified as therein mentioned, shall, except in 
 cases of fraud, be conclusive as to the right of the party 
 to enter such disclaimer or memorandum of alteration 
 under the said Actj and no objection shall be allowed to 
 be made in any proceeding upon or touching such letters 
 patent, specification, disclaimer, or memorandum of al- 
 teration, on the ground that the party entering such dis- 
 claimer or memorandum of alteration had not sufficient 
 authority in that behalf." 
 
 Disclaimernot The Act of the 5th & 6th Will. rV. C. 83, S. 1, pro- 
 
 pending, vided that " no disclaimer or memorandum of alteration 
 
 shall be receivable in evidence in any action or suit (save 
 and except in any proceedings by scire facias) pending at 
 the time when such disclaimer or alteration was enrolled, 
 but in every such action or suit the original title and 
 specification alone shall be given in evidence, and deemed 
 and taken to be the title and specification of the inven- 
 tion for which the letters patent have been or shall have 
 been granted." 
 Act not retro- Under this section it was decided that where a patent 
 infiSgeiMntr is Originally void, but is amended by a disclaimer, the 
 Act has not a retrospective operation, so as to make a 
 party liable for an infringement committed prior to the 
 time of entering the disclaimer, even though the parts 
 
 (a) Wallington v. Dale, 7 Exch. 888. 
 
DISCLAIMERS. 139 
 
 infringed have not been affected by the disclaimer ; (a) Chap. v. 
 
 and by the Patent Law Amendment Act (15 & 16 Vict. " 
 
 c. 83j s. 39) it is provided that " no action shall be Action may 
 brought upon any letters patent in which or on the spa- withouUeale' 
 cification of which any disclaimer or memorandum of al- °^^^^ officer, 
 teration shall have been filed in respect of any infringe- 
 ment committed prior to the fiKng of such disclaimer or 
 memorandum of alteration^ unless the law officer shall 
 certify in his fiat that any such action may be brought, 
 notwithstanding the entry or filing of such disclaimer 
 or memorandum of alteration." 
 
 The law officer may before granting his fiat require Law officer 
 the applicant to advertise his disclaimer or memorandum disciainer'or 
 of alteration in such manner as he may think fit, and if S'™teration" 
 he requires such advertisement, must certify in his fiat *? ^f adver- 
 that the same has been duly made. (&) 
 
 Any person may enter a caveat against such disclaimer Caveats 
 or memorandum of alteration, which gives him a right to ofaimS mty 
 have notice of the application being heard by the law ^^ entered, 
 officer, (c) 
 
 All applications for leave to enter a disclaimer or Applications 
 
 1 p ij j_' J 1 T T -1, for disclaimers 
 
 memorandum or alteration are to be made, and all and caveats to 
 
 caveats relating thereto are to be lodged, at the office of ''^ ^**^ <>*««• 
 
 the commissioners, and are to be referred to the law 
 
 officer, {d) 
 
 AU the provisions of the Acts of the 5th and 6th WiU. Provisions of 
 
 IV. and 7th and 8th Vict. c. 69, respectively relating to c. 83, and of 
 
 disclaimers and memoranda of alterations in letters patent, \ e/ alto dis- 
 claimer and 
 
 (a) Perry v. Skinner, 2 M. & (c) lb. "f^Tteration™ 
 
 W. 471 ; B. V. Mill, 10 C. B. 379. ((f) 15 & 16 Vict. c. 83, s. 39. t° apply to 
 
 (J) 5 & 6 WiU. IV. c. 83, See also App. Kules of Practice the Patent 
 
 s. 1. See also App. Rules of before Law Officer. ^^'^ Amend- 
 
 ^ . „ T r\jn meat Act. 
 
 Practice before I^aw Umcer. 
 
140 
 
 DISCLAIMBES. 
 
 Chap. V. 
 
 Stamp duties. 
 
 are applicable and apply to any letters patent granted 
 and to any specification filed under the provisions of the 
 Patent Law Amendment Act. (a) 
 
 The application for leave to disclaim must be impressed 
 with a stamp of £5 ; a caveat with a stamp of £2. (6) 
 
 (a) 15 & 16 Vict. c. 83, s. 39. 
 
 (J) 16 Vict. c. 5. 
 
CHAPTER VL 
 
 OF THE METHOD OF OBTAINING LETTEHS PATENT. 
 
 I ""HE law relating to the grant of letters patent is now Chap. vi. 
 -•- regulated by the " Patent Law Amendment Act, 
 1852/' (a) and the acts of the 16th Vict. o. 6, 16 & 17 
 Vict. c. 115, and 22 Vict. c. 13. The first five sections 
 of the Patent Law Amendment Act relate to the Com- 
 missioners of Patents, their seal, their power of making 
 rules, and to their office and officers. (See post, chap, 
 vii.) 
 
 The first step for an applicant for letters patent to Petition for 
 take is to petition the Crown for a grant. The petition patent the first 
 states that the petitioner is in possession of an invention ^ ^^' 
 (naming it) ; that he believes that it will be of great pub- 
 lic utility ; that he is the first and true inventor ; and that 
 it is not in use by any other person or persons to the best 
 of his knowledge and belief. The application must be 
 for one invention only. (6) The petition is accompanied 
 by a declaration in support. Forms of petition and de- 
 claration will be found in the schedule to the Act. 
 
 Lithographed forms of petition and declaration may 
 be obtained from law stationers. 
 
 In any application for a patent which is stated to be a Declaration 
 
 where patent 
 communicated 
 from abroad, 
 (a) 15 & 16 Vict. c. 83. (J) See App. Third Set of 
 
 Rules, cl. 1. 
 
142 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Petition and 
 declaration to 
 be accom- 
 panied by a 
 provisional 
 epeciiication. 
 
 Size of docu- 
 ments. 
 
 commumcation from abroad^ the declaration ought to state 
 the name and address of the party from whom it has been 
 received in the following manner : — 
 
 No. 1. When declaration is made in the United King- 
 dom, — " That it has been communicated to me from 
 abroad by (here insert name and address in full) ." 
 
 No. 2. In other cases, — " That it is a communication 
 from (A. B.), a person resident at (here insert the ad- 
 dress in full) ." (a) 
 
 The petition and declaration are then left at the office 
 of the commissioners. There is also left at the same time 
 a statement in writing, called a provisional specification, 
 signed by or on behalf of the applicant, describing the 
 nature of the invention. The day of the delivery of these 
 documents is endorsed on them and recorded, and a cer- 
 tificate given to the applicant or his agent. (&) 
 
 The petition for the grant of letters patent and de- 
 claration and the provisional specification must be 
 written upon sheets of paper of twelve inches in length 
 by eight inches and a-half in breadth, leaving a margin 
 of one inch and a half on each side of the page, so that they 
 may be bound in the books to be kept at the office. 
 The drawings accompanying the provisional specification 
 must be made upon a sheet or sheets of parchment, paper, 
 or cloth, each of the size of twelve inches in length by 
 eight inches and a-half in breadth, or of the size of 
 twelve inches in breadth by seventeen inches in length, 
 leaving a margin of one inch on every side of each 
 sheet, (c) 
 
 (a) Kule of 23rd Feb. 1859. 
 (6) 15 & 16 Vict. c. 83, 
 s. 6. 
 
 (c) See First Set of Rules, 
 cIb. 1, 2. 
 
LBTTEES PATENT. 143 
 
 All provisional specifications must be written on one Chap. VI. 
 side only of the sheet, (a) 
 
 No amendment or alteration at the instance of the Amendment 
 applicant will as a rule be allowed in a provisional specification, 
 specification after it has been recorded, except for the 
 correction of clerical errors or of omissions made per 
 incuriam. (&) 
 
 The provisional specification must state distinctly and Provisional 
 
 •j 11 ••Tin in n T ■ • -I specification 
 
 mtemgibly the whole nature of the invention, so that must be dis- 
 the law officer may be apprised of the improvement, and ™° ' 
 of the means by which it is to be carried into effect, (c) 
 The application and provisional specification are then Reference to 
 referred to one of the law officers of the crown, [d) He 
 may call to his aid such scientific or other person as he 
 may think fit, who is to be paid such sum by the appli- 
 cant as the law officer may direct. If the law officer is 
 satisfied that the provisional specification describes the 
 nature of the invention he will allow it and give a certi- 
 ficate of his allowance, which is filed in the office, and 
 the invention is then protected for the term of six months 
 from the consequences of use and publication, (e) 
 
 The provisional specification must as a rule be for Provisional 
 
 specification 
 one invention only. (/) must be for 
 
 The title of the patent must point out distinctly and o^y™^^"^ '°" 
 specifically the nature . and objects of the invention, [g) Title must be 
 " Every patent must stand on the ground of improve- 
 ment or discovery. If of improvement, it must stand on 
 the ground of improvement invented ; if of discovery, it 
 
 (a) Rule of 23rd Feb. 1859. (/) Third Set of Rules, cl. 1. 
 
 (6) Second Set of Rules, cl. 9. (jg) Third Set of Rules, cl. 2 ; 
 
 (c) Ih. cl. 10. HousehiU Iron Co. v. Neilson, 1 
 
 (d) 15 & 16 Vict. c. 83, s. 7. Webs. P. R. 673, 
 
 (e) n. s. 8. 
 
144 THE METHOD OF OBTAINING 
 
 Chap. vi. must stand on the ground of the discovery of aomething 
 altogether new ; and the patent must distinguish and adopt 
 itself accordingly. If the patent be taken out for dis- 
 covery when the alleged discovery is merely an addition 
 or improvement^ it is scarcely necessary to observe that 
 it will be altogether void/' (a) 
 
 The title must give some idea^ and so far as it goes a true 
 idea, of the alleged invention. Where the title described 
 the invention to be " for certain improvements in copper 
 and other plate printing," and it appeared that copper 
 plate printing consisted of a great variety of processes; 
 it was held that an improvement in the preparation of 
 the paper which rendered the lines on the plate engraving 
 more clear and distinct might be considered as an im- 
 provement in copper plate printing, and that the title 
 was not too vague. (6) 
 
 In Nickels v. Maslam, (c) letters patent were obtained 
 for " improvements in the manufacture of plaited fabrics." 
 The specification described only a single improvement in 
 the mode of manufacture. It was held that there was 
 not such an inconsistency between the title of the inven- 
 tion and the description as to invalidate the patent. 
 
 In Wright v. Hitchcock [d] the title of the patent described 
 it as being for the invention of ''improvements in the 
 manufacture of frills or ruffles, and in the machinery or 
 apparatus employed therein." The specification described 
 a process of plaiting fabrics by means of a reciprocating 
 knife having a straight or serrated edge and provided 
 with suitable notches on its edge for the passage of the 
 
 (a) Per Lord Eldon in Hill (c) 8 Scott (N. R.) 97. See 
 
 V. Thompson, 3 Mer. 626. also Perm v. Bibhy, L. R. 2 
 
 (V) Sturtz V. Be la Rue, 5 Ch. 127. 
 Russ. 324. id) L. R. 5 Exch. 37. 
 
LETTERS PATENT. 145 
 
 needle or needles of a sewing machine with which it was Chap. VJ. 
 worked in combination. The claims were — 1. The 
 general construction, arrangement and combination of 
 machinery, apparatus or means for producing crimped 
 or plaited frills or trimmings in a sewing machine. 
 2. The application and use of a reciprocating knife for 
 crimping fabrics in a sewing machine. 3. The peculiar 
 manufacture of crimped or plaited frills or trimmings as 
 hereinbefore described and illustrated by fig. 8 of the 
 drawings. The drawing showed a double frill, or a 
 middle plaited strip with a frill above and a frill below. 
 It was held that the patent was not for the manufactured 
 product but for the process of manufacturing it. Sir 
 P. Kelly, C. B., said : " The title of the patent describes 
 it as being for the invention of " improvements in the 
 manufacture of frills or ruffles and in the machinery 
 employed therein.'^ It is not for an improvement in 
 frills or ruffles, still less for an improved frill or ruffle, 
 but for an improvement in the manufacture of frills or 
 ruffles and the machinery employed therein. The speci- 
 fication also relates entirely to the machinery, and con- 
 tains from beginning to end nothing which could lead 
 us to construe it as a specification of the articles manu- 
 factured." (His lordship then stated the third claim, 
 and proceeded :) " But is it the kind of frill that is made 
 the subject of the claim? On the contrary, it is the 
 peculiar mode of manufacturing it, or the frill as manu- 
 factured by a reciprocating knife. Therefore, whether ' 
 we look at the title of the patent, the specification, or the 
 claim, the patent is not for the article manufactured, but 
 for the mode by which the article described is brought 
 into existence." 
 
 Where the title is not inconsistent with the speci- 
 
 L 
 
146 THE METHOD OF OBTAINING 
 
 Chap. VI. fication and no fraud is practised it is not a fatal objec- 
 tion that the title is so general as to be capable of com- 
 prising a different invention from that for which the 
 patent is claimed, (a) It must be consistent with the 
 specification, with which it may be read for the purpose 
 of explanation. (6) 
 
 Instances of In the following cases the titles were considered to 
 
 sufficient title. , ,»,.■■ . t^t -n /^J^ ix 
 
 be sufficiently precise. In Oook v. Pearce (c) the patent 
 
 was taken out for improvements in carriages, and the 
 invention was in fact an improvement in German shutters 
 which were used only in some kinds of carriages. A patent 
 was taken out for "certain improvements in the doors 
 and sashes of carriages." In the specification, after 
 describing it, the patentee said : " I have shown my 
 invention as applied to railway carriage doors and win- 
 dow fittings, although they are equally applicable to 
 the doors and windows of any other description of car- 
 riage or in any position where windows and doors are 
 subject to jar and vibration," and the claim in the speci- 
 fication was held not to be larger than the title of the 
 patent, {d) 
 
 Before the date of a patent it was known that sul- 
 phuret of iron produced by the action of sulphuretted 
 hydrogen upon hydrated oxide of iron would be re- 
 oxidized by being exposed to the action of atmospheric 
 air ; but it was not known that when the sulphuret was 
 produced by the exposure of hydrated oxide of iron to 
 the action of sulphuretted hydrogen mixed with coal gas, 
 
 (a) Cook V. Pearce, 8 Q. B. 8M.&W.806; Oxley \. Holden, 
 
 1044 ; NeiUon v. Harford, 8 M. 8 C. B. (N. S.) 666. 
 
 & W. 806. (c) 8 Q. B. 1044. 
 
 (&) Sturtz V. De la Rue, 5 {d) Oxley v. Holden, 8 C. B. 
 
 Russ. 324 ; NeiUon v. Harford, (N. S.) 666. 
 
LETTERS PATENT. 147 
 
 the re-oxidation of the iron might be prevented by the Cbap. VI. 
 
 cyanogen compounds of ammonia and tarry matter which 
 
 would be mixed with it. It was held that a patent might 
 
 be had for re-oxidizing the iron by exposure to the air 
 
 after it had been used in the purification of coal gas, and 
 
 also that the inrention came within the title of the patent 
 
 as an improTed mode of manufacturing gas. {a) 
 
 In Beard v. Ijgerton,{b) a title which described the 
 patent to be for a certain invention of " a new or an im- 
 proved method of obtaining the spontaneous reproduc- 
 tion of aU the images received ia the focus of the camera 
 obscura " was held to be sufficiently precise and certain ; 
 and in Stead v. Williams, (c) a title which described the 
 invention as being for a mode of " making or paving 
 public streets and highways, and public and private 
 roads, courts and bridges, with timber or wooden blocks " 
 was held not too vague. 
 
 In B. V. Mill,{d) the title of patent was for "im- 
 provements in instruments used for writing and marking," 
 and the specification contained a claim for "improve- 
 ments in pencil-cases, pen-holders and pens." It was 
 • held that the specification was as comprehensive as the 
 title, as pen-holders and pencil-cases might be described 
 as instruments used for marking as well as writing. 
 
 But where the patent was for " improvements in the instances of 
 manufacture of gas for the purpose of illuminating, and 
 in the apparatus used when transmitting and measuring 
 gas," and the title of the specification described the in- 
 vention as consisting of " improvements in the manufac- 
 ture of gas for illumination and in the apparatus used 
 
 (a) Hills V. The London Gas (c) 2 Webs. P. R. 126. 
 
 Light Co., 5 H. & N. 312. (d) 10 C. B. 379. 
 
 (J) 3 C. B. 97. 
 
148 THE METHOD OF OBTAINING 
 
 Chap. VI. therein^ and when transmitting and measuring gas/' and 
 the specification stated the invention to relate " first to a 
 mode of manufacturing gas for the purpose of illumina- 
 tion ; secondly, to improvements in setting and heating 
 clay retorts for making coal gas ; thirdly, to a mode of 
 manufacturing clay retorts ; and fourthly, to improvements 
 in apparatus for measuring gas when it is heing trans- 
 mitted to the consumer," it was held that there was a 
 material variance between the invention specified and 
 that described in the title : as the claim for making retorts 
 could not be called either a mode of manufacturing gas 
 or the apparatus used in measuring and transmitting 
 gas, and that therefore the patent was void, (a) 
 
 In. B. V. Metcalfe, (b) a brush differing from a com- 
 mon one in no other respect than that the hairs or 
 bristles were of unequal length, was held to be impro- 
 perly described as a " tapering brush" by Lord Bldon, 
 who said, " If the word tapering be used in its general 
 sense the description is defective, there is no coming to 
 a point. If the term has had a different meaning an- 
 nexed to it by the usage of the trade it may be received 
 in its perverted sense." In the case of B. v. Wheeler, (c) 
 the patent was for "a new and improved method of 
 drying and preparing malt," and the specification showed 
 that the invention was, not as would be supposed, for a 
 method* of making malt from barley, but for making 
 a colouring matter for beer from prepared malt ; Abbott, 
 C. J., said ; " The language in which the supposed inven- 
 tion is described in a patent of this nature is the lan- 
 guage of the patentee himself. He represents to the 
 Crown that he has invented this thing or that thing, and 
 
 (a) CroU V. Edge, 9 C. B. (J) 2 Stark. 249. 
 
 479. (c) 2 B. & Aid. 345. 
 
LETTEES PATENT. 149 
 
 that he is the first aad sole inventor thereof, and the Chap. vi. 
 
 Crown yielding to his representations and ■willing to 
 
 give enconragement to all arts and inventions that may 
 
 be for the public good, grants to the patentee the sole 
 
 liberty and privilege of nsing his said invention for a 
 
 certaia time nnder the conditions before noticed. It is 
 
 obvions, iherefore, that 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 
 
 wiU not be the less true if it should happen that the 
 
 patentee has invented some other matter or thing of 
 
 which upon a true representation thereof he might have 
 
 been entitled to a grant of the exclusive use." 
 
 In Cochrane v. Smethurst, (a) it was held that a patent 
 " for an improved method of lighting cities, towns and 
 villages" could not be supported by a specification 
 describing an improved lamp ; and in Brunton v. 
 MawJces,{b) it was held that a patent for improvements 
 
 ia the construction of ship's anchors, windlasses and 
 
 chain cables could not be supported unless there was 
 
 novelty in each invention. 
 
 If the law officer is of opinion that the title is too Amending 
 
 large or insufficient, he may allow or require it to be 
 
 amended, (c) 
 
 Where a provisional specification is left, and provi- No right of 
 
 sional protection is thus obtained, there is nothing to ?" i^^;^™* 
 
 prevent another provisional specification for a similar S^'<^^n. 
 
 invention being left, and letters patent may be granted 
 
 to the second applicant, within six months of the time 
 
 when the first provisional specification was left, (d) 
 
 (a) 1 Stark. 205. (c) 15 & 16 Vict. c. 83, s. 8. 
 
 (6) 4 B. & Aid. 542. (rf) JEx parte Boies If Red- 
 
150 THE METHOD OF OBTAINING 
 
 Chap. VI. Instead of leaving a provisional specification, the ap- 
 
 Com lete plicant may, if he thiaks fit, file an instrument under his 
 
 specification Jjand and seal called a complete specification, particularly 
 
 instead of pro- describing' and ascertaining the nature of the invention, 
 
 visional spe- . i mi • • j. 
 
 cification, Buch and in what manner it is to be performed. This mstru- 
 fer for a limited ment must be mentioned in the declaration. The day of 
 rights as letters delivery of any of the above mentioned documents is 
 patent. endorsed on them, and recorded in the office, and a cer- 
 
 tificate given to the applicant or his agent. The inven- 
 tion is then protected for six months, and the applicant 
 during that time enjoys the privileges of a patentee, (a) 
 
 All specifications, in pursuance of the conditions of 
 letters patent, and all complete specifications accompany- 
 ing petitions for the grant of letters patent, must be 
 written bookwise upon a sheet or sheets of parchment, 
 each of the size of twenty-one inches and a half in length 
 by fourteen inches and three-fourths of an inch in breadth; 
 they may be written on both sides of the sheet, but a 
 margin must be left of one inch and a half on every side of 
 each sheet. 
 
 The drawings accompanying such specification must be 
 made upon a sheet or sheets of parchment, each of the 
 size of twenty-one inches and a half in length by fourteen 
 inches and three-fourths of an inch in breadth, or upon a 
 sheet or sheets of parchment, each of the size of twenty- 
 one inches and a half in breadth by twenty-nine inches 
 and a half in length, leaving a margin of one inch and a 
 half on every side of each sheet. (6) 
 But not so as The appKcant does not, by taking this course, acquire 
 vious applicant the rights of a patentee, so as, during the six months 
 
 for sinular 
 
 oEi^r ^°'^' ^- ^- ^ ^^' ^'^'^ ' ^'^P'"'*' («) 15 & 16 Vict. c. 83, s. 9. 
 
 grant. Bailey, L. R. 8 Ch. 60 ; Ex (b) Order 1st Oct. 1852. 
 
 parte Henry, ib. 169. 
 
LBTTEBS PATENT. 151 
 
 protection, to prevent any other person, wlio Las pre- Chap. vi. 
 viously applied for a patent for a similar iavention, from 
 obtaining a patent, (a) 
 
 Any part of the provisional specification may be omitted Variance be- 
 
 twBBn provi" 
 
 from the complete specification, if there is no fraud, and sional and 
 the effect of the remainder is not altered by the omission. cScatfons!''^" 
 Thus, in Thomas v. Welch, (b) the provisional specifica- 
 tion of a patent for sewing machines claimed amongst 
 other improvements, that a certain instrument which im- 
 proved the work, " or another acting therewith," acted to 
 hold the work during the iusertion of the needle, while 
 the complete specification appeared to describe only one 
 instrument as moving and holding the work. It was 
 held that this was not such a variance as could invalidate 
 the patent. 
 
 The office of the provisional specification is not to dis- Office of pro- 
 close the entirety of the invention, but only to show that fication. ^ 
 the invention fuUy specified is the same in substance as 
 that presented to the law officer, (c) 
 
 The statute requires, that in the provisional specifica- The invention 
 
 . ■ 11 1 11 1 1 -IT described in 
 
 tion " the nature of the invention shall be described, the two speci- 
 but that the complete specification shall particularly de- brthrsame.^ 
 scribe and ascertain the nature of the invention, and in 
 what manner the same is to be performed." If, there- 
 fore, it were possible to depart from the nature of the 
 invention described in the provisional specification, pro- 
 tection might be given to a patentee for something de- 
 scribed in it, from which he might depart altogether 
 when he filed his complete specification. It is, at all 
 
 (a) Ex parte Henry, L. R. 8 R. 15 ; S. C. on app. 4 C. B. 
 Ch. 167. (N. S.) 269; Thomas v. Wekh, 
 
 (b) L. R. 1 C. P. 192. L. R. 1 C. P. 502 ; Wright v. 
 
 (c) Newall v. Elliott, 13 W. Hitchcock, L. R. 5 Exch. 42. 
 
152 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Complete 
 specification 
 need not ex- 
 tend to every- 
 thing included 
 in proviaional 
 specification. 
 
 Provisional 
 specification 
 may be in 
 some respects 
 incomplete. 
 
 events, requisite that the invention, as shown in the two 
 specifications, shall be one and the same. No addition 
 or alteration ought to be made by which the nature of 
 the invention, as described in the complete specification, 
 becomes in a material respect different from the nature of 
 the invention described in the provisional specification, (a) 
 
 The complete specification must not claim anything 
 different from that which is contained in the provisional 
 specification, but it need not extend to everything so 
 included. Thus, where the provisional specification of a 
 patent for " an improvement in the bearings and bushes 
 for the shafts of screw and submerged propellers'' de- 
 scribed the invention to consist in employing wood in the 
 construction of such bearings and bushes, and the com- 
 plete specification afterwards, in describing the mode in 
 which the wood was to be used, claimed the employment 
 of wood in the construction of bearings and bushes " as 
 therein described," it was held that there was not such a 
 variation between the provisional and complete specifica- 
 tions as invalidated the patent. (&) 
 
 If it were necessary that the provisional specification 
 should enter into all the minute details as to the manner 
 in which the invention is to be carried out, it would have 
 to be as fuU as the complete specification and drawn with 
 as much care. The statute by the use of the word 
 " complete " implies that the provisional specification may 
 be in some respects executory and iacomplete. It enacts 
 that the provisional specification is to describe the nature 
 of the invention and no more, and that the complete 
 specification shall describe not only the nature of the in- 
 
 (a) Per Lord Westbury in 
 Foxwell V. Bostoch, 4 De G. J. & 
 S. 298 i 10 L. T. (N. S.) 144. 
 
 (J) Perm v. Bibby, L. R. 2 
 Ch. 127. 
 
LETTEKS PATENT. 153 
 
 vention but also particularly ascertain the manner in Chap. vi. 
 which it shall be performed. In Be Newall Sr Elliot, (a) 
 the inventor of an improved apparatus for laying down 
 submarine telegraph cables described his invention in 
 the provisional specification as follows : — " The cable or 
 rope containing the insulated wire or wires is passed 
 round a cone, dr if it is a long cable round several cones, 
 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 ; " and in the complete specification 
 after repeating the above description the inventor went 
 on to say : " When the wire or cable is to be laid down 
 I place over the cone an apex or top which is conoidal as 
 shown in the drawing, or conical, and around this I 
 suspend several rings of iron or other metal by means of 
 cords so as to admit of adjustment at various heights over 
 the cone. The use of these rings is to prevent the bight 
 of the rope from flying out when going at a rapid speed; 
 and the combination of these parts of the apparatus pre- 
 vents the wire or cable from running into kinks .'^ He 
 claimed as his inventi-on 1st coiling the wire or cable 
 round a cone, 2ndly the supports placed cylindrically 
 outside the coil round the cone, Srdly the use of the 
 rings in combination with the cone as described. It 
 was held that the omission of the rings from the pro- 
 visional specification did not invalidate the patent. 
 
 The provisional specification cannot be read for the 
 purpose of interpreting the complete specification. (6) 
 
 Where the applicant has filed a complete specification 
 
 (a) 4 0. B. (N. S.) 293. (J) Mackelcan v. Bennie,'\^^ 
 
 C. B. (N. S.) 52. 
 
154 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Conditions 
 voiding the 
 patent. 
 
 Provisional or 
 complete speci- 
 fication ob- 
 tained in fraud 
 not invalidate 
 letters patent. 
 
 Commission- 
 ers to cause 
 protections to 
 be advertised. 
 
 Application 
 for letters 
 patent to be 
 advertised, and 
 also oppo- 
 sitions to the 
 same. 
 
 and letters patent are granted to him ; instead of a con- 
 dition voiding tlie letters patent in case the invention is 
 not described and ascertained by a subsequent specifica- 
 tion, such letters patent wiU be conditional to become void 
 if such complete specification does not particularly de- 
 scribe and ascertain the nature of the invention and how 
 it is to be performed, (a) 
 
 Letters patent granted to the true and first inventor 
 of an iaventionj will not be invalidated by reason 
 of a provisional specification or complete specification 
 deposited in fraud (&) . 
 
 Where any invention is provisionally protected under 
 the Act, or protected by the deposit of a complete specifi- 
 cation, the commissioners are to cause such protection to 
 be advertised, (c) the advertisement will be in the '' London 
 Gazette," and sets forth the name and address of the 
 petitioner, the title of his invention, the date of the appli- 
 cation, and in the case of a complete specification, that 
 such has been deposited, (c?) 
 
 As soon as he thinks fit, after the foregoing steps have 
 been taken, the applicant may give notice at the office 
 of commissioners of his intention to proceed with his 
 application ; the commissioners then cause the application 
 to be advertised. Any persons having an interest in 
 opposing the grant may leave particulars of their objections 
 to the application as foUows. (e) The notice of intention 
 to proceed is advertised in the "London Gazette," and the 
 advertisement sets forth the name and address of the pe- 
 titioner, and the title of his invention; and that any persons 
 having an interest in opposing such application are to be 
 
 (a) 15 & 16 Vict. c. 83, s. 9. 
 (J) n. s. 10. 
 (c) lb. s. 11. 
 
 (d) First set of Rules and 
 Regulations, els. 3, 4. 
 
 (e) 15 & 16 Vict. c. 83, s. 12. 
 
LETTERS PATENT. 155 
 
 at liberty to leave particulars in writing of their objections Chap. vi. 
 to the application at the oflB.ce within twenty- one days after 
 the date of the Gazette in which the notice is issued, (a) 
 
 The notice of the applicant's intention to proceed Time when 
 must be left at the ofllce eight weeks before the expiration ceed to be"ieft 
 of the term of provisional protection^ and no notice to ^^ ° °^' 
 proceed may be received unless the same has been left in 
 the oflB.ce eight weeks at the least before the expiration of 
 such provisional protection. TheLord Chancellor may upon 
 special circumstances allow a further extension of time. 
 
 After the time for delivery of such objections shall have Specifications 
 
 _,, ..,.„.. ,. . and objections 
 
 expired, the provisional specincation, or complete speci- to be refen-ed 
 
 fication, and particulars of objectiouj are referred to the law officer. 
 oflBcer to whom the application has been referred. (6) 
 
 The law oflBcer mav bv certificate order, by or to whom Power to law 
 
 '' "' . . , . . officer to order 
 
 the costs of any hearing or inquiry upon any objection or by or to wtom 
 
 oOR'fs ft nflll Tip 
 
 otherwise in relation to the grant of the letters patent or paid. 
 in relation to the provisional or other protection shall be 
 paidj and in what manner and by whom they are to be 
 ascertained. If they are not paid within four days after 
 they are ascertained, the law oflBcer may make an order 
 for payment, which may be made a rule of court, (c) 
 
 After the hearing the law oflBcer may cause a warrant Power to law 
 
 _, . officer to cause 
 
 to be made for the sealing of letters patent, inis warrant awan^antto 
 is to be sealed with the seal of the commissioners, and slaUng^ofTet- 
 sets forth the tenor and effect of the letters patent. The *^''^ P**^°'- 
 law officer may direct the insertion of all such restrictions, 
 conditions and provisoes as he may deem usual and expe- 
 dient. The warrant " shall be the warrant for the making 
 and sealing of letters patent under this Act according to 
 
 the tenor of the said warrant." The application for the When appli- 
 cation tor 
 (a) First set of Rules and (6) 15 & 16 Vict. c. 83, s. 13. wairant to be 
 
 Regulations, cl. 5. (c) 15 & 16 Vict. c. 83, s. 14. "* ^' 
 
156 THE METHOD OE OBTAINING 
 
 Chap. VI. Warrant of the law officer and for letters patent must be 
 made at the office twelve clear days at least before the 
 expiration of the term of provisional protection, and no 
 warrant or letters patent will be prepared unless such 
 application has been made within the time fixed. The 
 Lord Chancellor may upon special circumstances aUow a 
 further extension of time, on being satisfied that the same 
 has become necessary by accident and not from neglect 
 or wilful default of the applicant or his agent, (a) 
 
 All powers which the Lord Chancellor had at the time 
 
 of the passing of the Act are reserved to him. (&) In 
 
 the case of a provisional specification only having been 
 
 left, a provision requiring a complete specification to be 
 
 filed within six months from the date of the application 
 
 must be inserted, (c) 
 
 Nothing to It is provided that nothing in the Act shall extend to 
 
 rogative of the abridge Or afiect prerogative of the Crown in relation to 
 
 granting or the granting or withholding of any letters patent, and that 
 
 ^^t'oHet? i* shall be lawful for Her Majesty by warrant under her 
 
 ters patent. Royal sign manual to direct the law officer to withhold his 
 
 warrant, or that any letters patent for the issuing of 
 
 which he has issued a warrant shall not issue, or to direct 
 
 the insertion in any letters patent of any restrictions, 
 
 conditions or provisions which she may think fit, and also 
 
 to direct any complete specification to be cancelled, (d) 
 
 A grant of letters patent to a subject does not, 
 according to the decision in the case of Feather v. The 
 Queen, (e) exclude the Crown from using the invention 
 without the licence of the patentee, and the Court of 
 
 (a) Third set of Rules, cl. 6. (d) 15 & 16 Vict. c. 83, s. 16. 
 
 (J) 15 & 16 Vict. c. 83, s. 15. See In re Sehlumberger's Patent, 
 
 (c) Second set of Rules and 9 Moo. P. C. 0. 1. 
 Regulations, cl. 8. (e) 6_B. & S. 257. 
 
LETTERS PATENT. 157 
 
 Queen's Bench will not issue a mandamus to any Govern- Chap. VI. 
 ment officers to compel themj if they use the invention, 
 to settle terms according to the patent, (a) If they have 
 infringed the patent, the remedy is by action, and not by 
 way of petition of right, (b) 
 
 Improvements in instruments or munitions of war Munitions of 
 may be assigned by the inventor to the Secretary of 
 State for War, who may certify to the Commissioners of 
 Patents that the invention should be kept secret. In 
 such a case the petition for letters patent and the specifi- 
 cation, and all documents relating to the invention, are 
 left with the Clerk of the Patents, under the seal of the 
 Secretary of State, to whom at the end of the term of 
 letters patent they are delivered up. (c) 
 
 As soon after the sealing of the warrant as required Issue of letters 
 by the applicant, the Commissioners cause letters patent 
 to be prepared according to the tenor of the warrant. 
 The Lord Chancellor then causes these to be sealed with 
 the Great Seal. Such letters patent extend to the whole Extent. 
 of the United Kingdom of Great Britain and Ireland, the 
 Channel Islands, and the Isle of Man. If the warrant so 
 directs, they can be made applicable to the Colonies, or 
 such of them as may be mentioned in the warrant. They 
 confer the like powers, rights, and privileges as letters 
 patent issued under the Great Seal. But nothing is to 
 give effect to any letters patent in any colony in which 
 they would be invalid by the law of the colony, (d) 
 
 No letters patent, except in the case of letters patent No letters 
 
 IT patent issued 
 
 destroyed or lost, may issue on any warrant, unless appli- after three 
 
 months 6i'om 
 (a) Hx parte Pering, 4 A. & (c) See 22 Vict. c. 13. rant."^"^"' 
 
 E, 949. (rf) 15 & 16 Vict. c. 83, s. 18. 
 
 (6) Feather v. The Queen, 6 
 
 B. & S. 257. 
 
158 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Power to Lord 
 Chancellor to 
 order letters 
 patent to be 
 sealed in cer- 
 tain cases. 
 
 Delay acci- 
 dental or 
 caused by or- 
 der of govern- 
 ment. 
 
 Where appli- 
 cant dies 
 during con- 
 tinuance of 
 protection 
 grant may be 
 to personal 
 representa- 
 tives. 
 
 cation be made to seal them within three months after 
 the date of the warrant; (a) nor after the protection 
 given by the Act has expired, unless the application to 
 seal has been made during that time, and has been de- 
 layed by reason of a caveat. In such a case they may be 
 sealed at such time as the Lord Chancellor shall direot.(6) 
 
 By a later Act (c) it is provided that where letters patent 
 have not been sealed during the continuance of the pro- 
 visional protection through accident, the Lord Chancellor 
 may seal them within a month after the expiration of the 
 provisional protection, and may date the sealing as of any 
 date before the expiration of such provisional protection. 
 
 The petition praying for extension, and the aflELdavit 
 accompanying it, must be left at the office. Where the 
 delay in sealing is alleged to have been caused by ad- 
 journed hearings of objections to the grant of letters pa- 
 tent before the law officer, the petitioner, before leaving 
 his petition, must obtain the certificate of the law officer 
 that such allegations are correct, and that the delay has not 
 been caused by the neglect or default of the petitioner, {d) 
 
 In Re Hersee 8p 8'mit'h{e) leave was given to extend 
 the time, within which the application for the warrant of 
 the law officer and for the letters patent ought to have 
 been made, the delay being small and accidental. And 
 in another case the time was extended, the petitioner 
 having been ordered to delay making his appHoation by 
 the War Office. (/) 
 
 In case the applicant dies during the continuance of 
 the protection, the letters patent may be issued to his 
 
 (a) 15 & 16 Vict. c. 83, s. 19. 
 (6) 15 & 16 Viot. c. 83, s. 20. 
 (c) 16 & 17 Vict. c. 115, s. 6. 
 {d) Order of 17th July, 1854. 
 
 (e) L. K. 1 Ch. 518. 
 (/) Mackintosh's Patent, 2 
 Jur. (N. S.) 1242. 
 
LETTERS PATENT. 159 
 
 personal representatives during the continuance of the Chap. VI. 
 protection, or at any time within three months after the 
 death of the applicant, notwithstanding the expiration of 
 the term of protection, {a) 
 
 In case any letters patent are destroyed or lost, others Letters patent 
 of the like tenor and effect, sealed and dated as of the lo^st™^^ 
 same day, may be issued. (6) 
 
 By afi order of the 15th of October, 1852, it is provided Opposing the 
 that every application to the Lord Chancellor against or the Lord Chan- 
 in relation to the sealing of letters patent shall be by "^ °'^' 
 notice, and that such notice shall be left at the office, and 
 shall contain particulars in writing of the objections to 
 the sealing of such letters patent. It is not necessary for Application to 
 any opposer to apply to the Court for leave to give no- necessary. 
 tice of opposition, (c) 
 
 No person who has not opposed before the law officer. Must have 
 except in cases where the reason for not having-so opposed sition°1before 
 is fully explained, will be allowed to oppose before the °'^° °^'^' 
 Lord Chancellor, {d} and the opposer cannot bring forward 
 before the Lord Chancellor any facts which were within his 
 knowledge when before the law officer, but which he did 
 not then bring forward, nor can he raise any new legal 
 argument on those facts, or produce any evidence which 
 he could have previously produced, (e) 
 
 Leave may be given to oppose the sealing of letters Extension of 
 patent notwithstanding the time for entering an opposi- sing gi-ant. 
 tion has expired, if there is no question of laches, and the 
 reason for the delay is properly accounted for. (/) 
 
 (a) 15 & 16 Vict. c. 83, (rf ) Mitchell's Patent, L. E. 2 
 
 s. 21. Ch. 343. 
 
 (J) lb. a. 22. (e) Ex parte Sheffield, L. R. 
 
 (c) Vincenfs Patent, L. R. 2 8 Ch. 237. 
 Ch. 341, overruling HeathorrCs (/) Brennand's Patent, 7 Jur. 
 
 Patent, 4 N. R. 489. (N. S.) 690. 
 
160 
 
 THE METHOD OP OBTAINING 
 
 Chap. VI. 
 
 Duty of the law 
 officer where 
 similar inyen- 
 tions. 
 
 This judgment 
 not interfered 
 with. 
 
 Letters patent 
 will be sealed 
 unless clearly 
 bad. 
 
 The person 
 who first ob- 
 tains a patent 
 has priority. 
 
 It is the duty of the law officer to investigate and de- 
 cide in the first instance whether two inventions for 
 similar inventions interfere with each other^ or which of 
 the two applicants is the true and first inventor, (a) and 
 the question ought not to be remitted to the Lord Chan- 
 cellor by directing warrants for both patents. (6) In Be 
 Fawcett's Patent, (c) on a caveat being entered before the 
 Great Seal had been affixed, the Lord Chancellor de- 
 clined to enter into the merits of the opposition, but 
 referred the matter back to the law officer, (c?) 
 
 The judgment of the law officer will not be interfered 
 with ; unless a case is made of surprise or fraud, or unless 
 some material fact has come to the knowledge of the ap- 
 pellant which if brought to the knowledge of the law 
 officer would have led him to decide differently, (e) 
 
 Unless a patent is clearly bad, the Lord Chancellor 
 will not refuse to sign it, as the effect of such refusal, if 
 erroneous, would be irremediable, whereas the sealing of 
 a bad patent leaves every one at liberty to dispute it. {/) 
 It is for the opposer to show that he has so clear a case 
 as to make it right to do that which, if wrongly done, 
 would, so far as relates to the patentee, be irreparable, 
 but which, if left undone, could not infiict upon the oppo- 
 nent any irreparable injury, (g) 
 
 Where there are several applicants for patents for 
 
 (a) Griffith and Samuda's (e) Vincent's Patent, L. K. 2 
 
 Patent, 5 L. T. 141. 
 
 (J) Ex parte Henry, L. R. 8 
 Ch. 167. 
 
 (c) 2 D. M. G. 439. 
 
 (d) And see StolFs Patent, 
 22 L. T. 233 ; Ux parte Hen- 
 son, 1 Webs. P. R. 432. 
 
 Ch. 341. 
 
 (/) Spence's Patent, 3 De G. 
 & J. 523 ; SusseU's Patent, 2 ib. . 
 130. 
 
 (g-) Ex parte Sheffield, L. R. 
 8 Ch. 240; Tolson's Patent, 6 
 D. M. a. 422. 
 
LETTERS PATENT. 161 
 
 similar inventions, the one who first obtains the letters Chap. vi. 
 patent to be sealed. wiU have priority, though another 
 applicant may have applied for provisional protection 
 first, (a) unless it is perfectly clear that there has been 
 fraud, as the opposer will still be able to get the patent 
 repealed, (b) 
 
 Where a later applicant for protection obtains his Later patent 
 
 ,„, ijm n T not allowed to 
 
 patent nrst, letters patent will not be granted to an earner cover any part 
 applicant for any part of his invention, which is covered 
 by the letters patent already obtained by the later appli- 
 cant, (c) But in a case where the relation of master and 
 servant existed between the applicants, and the master 
 became acquainted with the servant's invention, and the 
 evidence showed that there was great suspicion that the 
 master had profited by the servant's invention, it was 
 held that, under the circumstances, the letters patent for 
 the servant's invention might be sealed and bear the date 
 of his provisional specification, (d) 
 
 If a patent has been actually sealed, and another is Reference to 
 applied for, which is objected to on the grounds that the where patent 
 
 11 J • , • • , J • • sealed and 
 
 alleged invention is not new, and. is a mere evasion or another ap- 
 colourable imitation of the invention for which a patent fJoWected'to'^ 
 has been already granted, it will be referred to the law- 
 officer to say whether, having regard to the prior patent, 
 ±he present application ought to be granted ; (e) and if it 
 appears that part of the invention for which the patent is 
 
 (a) Ex parte Sates and Red- gate, L. R. 4 Ch. 577 ; Ex parte 
 
 gate, L. E. 4 Ch. 579 ; Simpson Henry, L. E. 8 Ch. 169. 
 and Isaacs' Patent, 21 L. T. (d) Ex parte Scott and Young, 
 
 81. L. E. 6 Ch. 274. 
 
 (6) Lowe's Patent, 25 L. J. (e) Ex parte Yates, L. E. 5 
 
 Ch. 454. Ch. 1 ; Ex parte Manceaux, ih. 
 
 (c) Ex parte Bates and Red- 518. 
 
 u 
 
162 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Objection that 
 first patent 
 obtained by 
 fiaud. 
 
 Lord Chan- 
 cellor may 
 impose terms. 
 
 Delay in ap- 
 plying. 
 
 sought is identical with part of an invention wMch is the 
 subject of the existing patent^ a second patent will not, 
 except under special circumstanceSj be granted for that 
 part, although the validity of the first patent is dis- 
 puted, (a) j^ 
 
 Where the sealing of a patent was opposed on the 
 ground of public user, and the applicant contended that 
 such user took place in consequence of fraud, which, under 
 15 and 16 Vict. c. 83, s. 10, would destroy the effect of 
 the user, it was held that this was a question of fact, 
 which ought to be tried by a jury on viva voce evidence, 
 and that the patent ought to be sealed, so as to allow 
 such trial to take place. (&) 
 
 The Lord Chancellor may, if he thinks fit, direct the 
 letters patent to be sealed upon terms, (c) 
 
 Where it appeared that a master and his foreman had 
 both invented certain improvements, for which the master 
 sought letters patent, they were granted on the terms of 
 being vested ia trustees for both parties, [d) As to the 
 terms of a compromise in a similar case see Brandies' 
 Patent, (e) 
 
 It is no objection to the grant of a patent that another 
 person has been making experiments and working to- 
 wards a similar invention. {/ ) 
 
 Where, in April, two months after the petition for a 
 patent had been left, the petitioner applied to have the 
 
 (a) Ex parte Manceaux, L. K. 
 6 Ch. 272; StolVs Patent, 21 
 L. T. 233. 
 
 (J) Vincents Patent, 2 Oh. 
 341. 
 
 (c) Dainei Patent, 26 L. J. 
 Ch. 298. 
 
 ((Q 'Re Russell's Patent, 2 De 
 G. & J. 130. 
 
 (e) 1 Bq. Rep. 121. 
 
 (/) -Ea; parte Henry, L. R. 
 8 Ch. 167. 
 
LETTERS PATENT. 163 
 
 great seal affixed, and a caveat was entered a week after- Chap. VI. 
 wards, and in September the applicant presented a peti- 
 tion :p6r sealing, it was held that the delay was no objec- 
 tion^ (a) 
 
 By an order of the 11th February, 1873, it was directed Lord Chan- 
 that every order made by the' Lord Ghancellor upon the to be drawn 
 hearing of petitions against or relating to the sealing of toma^end- 
 letters patent shall be drawn up, passed and entered by '^'"'^' 
 the Eegistrar of the Court of Chancery in attendance, and 
 that an office copy of such order shall be remitted by him, 
 without fee, to the clerk of the combined offices of the 
 Great Seal and the office of the Commissioners of Patents 
 for inventions, to be filed with the petition. 
 
 Where there was only one affidavit distinctly swearing AffidaTits in 
 
 IT Tin TIT- J- • opposition. 
 
 to the public use and sale ot an alleged invention, prior 
 to the date of the application for a patent, which was not 
 corroborated by the person alleged to have sold the goods, 
 the patent was ordered to be sealed. (&) So, too, the 
 patent was ordered to be sealed when the affidavits in 
 opposition were only filed on the morning of the day on 
 which the petition was ordered to be heard, (c) 
 
 Leave was given to serve notice of a petition for seal- Substituted 
 
 S61T1C6« 
 
 ing upon the solicitor of a person who had entered a 
 caveat in opposition, and who was out of the jurisdiction 
 of the Court. ((^) 
 
 The effect of a caveat is merely to entitle the person Effect of 
 
 caveat. 
 
 lodging it to notice, (e) 
 
 (a) Ex parte Bailey, L. K. 8 (d) CamphelTs Patent, 22 L. 
 
 Ch. 60. T. 93. 
 
 (J) Tolhauseris Patent, 14 W. (e) B. v. Cutler, 3 0. & K. 
 
 K. 551. 215. 
 
 (c) M'Kean's Patent, 1 De G. 
 F. & J. 2. 
 
164 THE METHOD OF OBTAINING 
 
 Chap. VI. The costs caused by an unsuccessful caveat will have 
 
 Costs *° ^^ P^^^ ^y *^® person entering it, and will be taxed 
 
 upon the principle upon which costs in a cause are taxed 
 
 as between party and party, (a) And costs caused by 
 
 notice of objections which were withdrawn were ordered 
 
 to be paid by the opposerT(6) ' But where the opposition 
 
 was considered jfaot to be unreasonable, costs were not 
 
 given, (c) », ■ 
 
 Of reference to Costs of reference to the law-officer will have to be 
 
 awo cer. ^^.^ ^^ ^^^ opposer, if unsuccessful, unless there is 
 
 fraud, (t^ 
 Date of letters Notwithstanding 18 Henry VI. c. 1, letters patent may 
 ''^ '^^ ' be sealed, and bear date as of the day of the application 
 
 for the same, (e) 
 Reckoned The day of the date is reckoned inclusively. (/) They 
 
 are usually dated as of the date of the provisional protec- 
 tion. But where a second applicant for a patent for a 
 similar invention has obtained letters patent before the 
 first applicant, the first applicant, on applying to have the 
 Great Seal affixed, will not be allowed to have his letters 
 patent dated as of the date of the provisional protection, 
 but they will be dated as of the day of the application for 
 sealing ;{g') even where it is alleged that the second 
 applicant obtained his letters patent to be sealed first by 
 fraud, {h) 
 
 (a) Cutler's Patent, 4 My. & (/) Russell T. Ledsam, 14 M. 
 
 Cr. 510 ; AlcocVs Patent, ib. & W. 574. 
 
 (J) Cohley's Patent, 31 L. J. (§■) Ex parte Bates and Red- 
 
 Ch. 333. gate, L. R. 4 Ch. 579 ; Saxby v. 
 
 (c) Ex parte Fox, 1 V. & B. Bennett, L. K. 8 Bxch. 210. 
 67. (K) Ex parte Bailey, L. R. 8 
 
 (d) Ex parte Yates, 5 Ch. 1 ; Ch. 60 ; Ex parte Scott and 
 Ex parte Manceaux, ib. 518. Young, L. R. 6 Ch. 274. 
 
 (e) 15 & 16 Vict. c. 83, s. 23. 
 
 inclusively. 
 
LETTERS PATENT. 165 
 
 Any ante-dated letters patent have the same validity Chap. vi. 
 as if they had been sealed on the day of the date. But , t~t~d 
 no legal proceedings can be taken in respect of any letters patent. 
 infringement committed before they were actually 
 granted, except where a complete specification has been 
 filed, (a) 
 
 Letters patent do not prevent the use of the invention Use in foreign 
 in any foreign ships in English ports or English waters, ^^ ' 
 where the invention is not used for the manufacture of 
 any goods for sale in the kingdom or for exportation, 
 unless the laws of the State to which the ships belong do 
 not allow BngHsh ships to use foreign inventions. (6) 
 This section was the result of the decision in Caldwell 
 V. Vanvlissingen, (c) where an injunction was granted 
 against foreigners to restrain them from using the 
 patented invention (a screw propeller) on board ships 
 within the dominions of England without the licence of 
 the plaintiffs. 
 
 Any person who uses the name of the patentee without penalty for 
 authority, or who counterfeits his stamp or mark, is paieftee.™^ °^ 
 liable to a penalty of £50 for each offence, {d) It 
 is no defence to an action for a penalty under this 
 section; for putting on an article, made according to 
 a patent, words which imitate the mark of the patentee, 
 without his licence ; that the invention is not a new 
 manufacture ; but it is necessary to prove that such words 
 do imitate and are so put on with a view of imitating 
 the mark, (e) 
 
 All letters patent except those granted after the filing Specifications 
 of a complete specification are to require the specification gtead of being 
 
 eni'oUed. 
 (a) 15 & 16 Vict. c. 83, s. 24. (d) 5 & 6 Will. IV. c. 83, s. 7. 
 
 (&) 15 & 16 Vict. c. 83, s. 26. (e) Myers v. Baker, 3 H. & 
 
 (c) 9 Hare, 415. N. 802. 
 
166 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Specificationa, 
 &c., to be filed 
 in such office 
 as Lord Chan- 
 cellor shall 
 direct. 
 
 Filing cannot 
 be dispensed 
 with. 
 
 Time for filina-, 
 
 Extension of 
 time. 
 
 to be filed in the Court of Chancery, instead of requiring 
 it to be enrolled, and no enrolment is requisite, (a) 
 
 Every specification to be filed in pursuance of the 
 condition of any letters patent is to be filed in such office 
 of the Court of Chancery as the Lord Chancellor shall 
 appoint, and every provisional specification and complete 
 specification left or filed at the office of the Commissioners 
 on the application for any letters patent is forthwith, 
 after the grant of the letters patent, or if no letters 
 patent are granted, then immediately on the expiration 
 of siK months from the time of such application, to be 
 transferred to and kept in the office appointed for filing 
 specifications in Chancery. (6) The office appointed for 
 filing is the Great Seal Patent Office, (c) 
 
 It was decided before the Act that enrolments could 
 not be dispensed with in order to keep the invention 
 secret ; {d) and a specification cannot be left at the office 
 conditionally, but can be delivered there only for the 
 purpose of being filed, (e) 
 
 The time within which the specification must be filed 
 (six months) (/) begins to run from the day after the 
 date of the patent, (gr) 
 
 When the specification has not been filed within the 
 time limited, provided that the delay has arisen from 
 accident and not from the neglect or wilful default of the 
 patentee, the Lord Chancellor may, if he think fit, extend 
 the time for filing for one month. (A) Every petition 
 
 (a) 15 & 16 Vict. c. 83, s. 27. 
 (6) s. 28. 
 
 (c) Order of the 1st Oct. 1852. 
 
 (d) Ex parte Koops, 6 Ves. 
 599 ; Ex parte Heathcote, 1 
 Webs. P. R. 431. 
 
 (e) Be Brovgh, 7 Beav. 104. 
 (/) Second set of Rules, el. 8. 
 (g-) Watson V. Pears, 2 Camp. 
 294, 
 
 (;0 16 & 17 Vict. c. 115, s. 6. 
 
LETTERS PATENT. 167 
 
 praying for extension of the time for filing and the affi- Chap. vi. 
 
 davit accompanying the same must be left at the office 
 
 of the Commissioners. And where the delay is alleged to 
 
 have been caused by adjourned hearings of objections to 
 
 the grant of the letters patent before the law officer to 
 
 whom the objections have been referred, the petitioner 
 
 before leaving his petition must obtain the certificate of 
 
 the law officer to the effect that the allegations in respect 
 
 of such adjourned hearings and causes of delay are in his 
 
 opinion correct, and that the delay has not been caused 
 
 by the neglect or default of the petitioner, (a) 
 
 Where the petitioners had been unable to file their 
 specification within the time required by the rules, owing 
 to objections having been filed, the time was extended 
 for one month. (&) So, too, where the delay was caused 
 by the non-delivery of a letter, dispatched in time, con- 
 taining directions for filing, the time was extended, (c) 
 But the time will not be extended where there has been 
 any neglect or default. (<?) 
 
 The Master of the Rolls has jurisdiction to alter a Amending 
 
 . . . complete 
 
 specification for correction or clerical errors or mis- specification, 
 takes from inadvertency, (e) Where before the Act a 
 patent was dated the 24th May, 1852, and the writ of 
 the Privy Seal the 22nd May, 1852, and the enrolment 
 was required to be made within six months after the date 
 of the writ, but the patentee, not being aware of the 
 
 (a) Order of the 17tli July, (c) Sharp's Patent, 1 Webs. 
 
 1854. P. E. 641. See as to amending 
 
 (5) Simpson and Isaacs' Pa~ clerical errors, Re Redmund, 5 
 
 tera<, 21 L. T. 81. Russ. 44; Nickel's Patent, 1 
 
 (c) Re Harris, 25 L. T. 90. Webs. P. R. 650 ; Ruhery's Pa- 
 
 (d) Campbell's Patent, 22 L. tent, 1 Webs. P. K. 649, n. ; Re 
 X. 93. Dismore, 18 Beav. 538. 
 
168 
 
 THE METHOD OF OBTAINING 
 
 Chap. VI. 
 
 Duty of patent 
 agent. 
 
 Of the stamp 
 duties to be 
 paid. 
 
 Agi'eement to 
 pay stamp 
 duties. 
 
 discrepancyj took the specification to be enrolled a day 
 too late, it was ordered that as the mistake arose from 
 a misprision of the clerk, the enrolment should be 
 amended, (a) There must be no delay in making the 
 application for amendment, (b) 
 
 It is the duty of an agent to know the latest state 
 of the law respecting patents, and where, owing to the 
 agent not knowing the decision in Ex parte Bates and 
 Redgate, (c) a second applicant for a similar invention was 
 enabled to get his patent sealed before the first applicant, 
 it was held that there was evidence of negligence, {d) 
 
 Formerly the whole expenses incident to the appli- 
 cation for and grant of letters patent had to be paid at 
 the time the patent was taken out. It is now pro- 
 vided, (e) that all letters patent granted under the pro- 
 visions of the " Patent Law Amendment Act, 1852," shall 
 be made subject to the condition that they shall be void 
 at the expiration of three and seven years respectively 
 from their date, unless there is paid before the expira- 
 tion of the three and seven years respectively the stamp 
 duties in the schedule annexed to the Act, viz. £50 and 
 £100 respectively. (/) The day of the date of the 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 were granted, (g) 
 
 By an agreement in writing between the plaintifip (an 
 inventor) and the defendant, it was agreed that the 
 
 (a) Adams' Patent, 21 L.T. 38. 
 (6) Re Blamond, 3 L. T. (N. 
 S.) 800. 
 
 (c) L. R. 4 Ch. 577. 
 
 (d) Lee v. Walker, L. R. 7 
 C. P. 121. 
 
 (e) 16 Vict. c. 5, s. 2. 
 (/) See also ss. 3 — 7. 
 (g) Williams v. Nash, 27 
 Beav. 93. 
 
LETTEES PATENT. 169 
 
 plaintiff should do all necessary actSj matters and things^ Chap. VI. 
 excepting the advance of money, as inventor, for the 
 purpose of procuring, securing and perfecting letters 
 patent, and should immediately after the same were pro- 
 cured, make and execute to the defendant or his nominee 
 a full and effectual assignment and assurance of one- third 
 part or share in the letters patent, and that the defen- 
 dant should hear payment and discharge all fees and 
 disbursements necessary for procuring and perfecting 
 letters patent. It was held that the whole consideration 
 for the payment of the money by the defendant was the 
 assignment to him by the plaintiff, that the execution 
 of the assignment was a condition precedent to hia 
 right to insist upon the payment being made, and that 
 the assignment not having been executed, the plaintiff 
 could not sue the defendant for not paying the £50 
 necessary to be paid within three years, (a) 
 
 (a) Hill V. Mount, 18 C. B. 72. 
 
CHAPTER VII. 
 
 OF THE OFFICE OF THE COMMISSIONEES. 
 
 Chap. VII. 
 
 Certain per- 
 sons consti- 
 tuted" Commis- 
 sioners of 
 Patents for 
 Inventions, 
 three of whom 
 may act, the 
 Chancellor or 
 Master of the 
 Rolls being 
 
 Seal of the 
 Commis- 
 
 Power to the 
 Commissioners 
 to make mles 
 and regula- 
 tions. 
 
 "D T the " Patent Law Amendment Act, 1852,^' tlie Lord 
 -^ Chancellor and Master of the Eolls, the law officers 
 of the Crown for England, Scotland and Ireland respec- 
 tively, together with such other persons as may from 
 time to time be appointed by her Majesty, are to be 
 Commissioners of Patents for Inventions ; her Majesty 
 may from time to time by warrant under her royal sign 
 manual, appoint such other person or persons as she 
 may think fit to be a Commissioner or Commissioners. 
 Every person so appointed is to continue in office during 
 her Majesty^s pleasure, and all the powers vested in the 
 Commissioners may be exercised by any three or more 
 of them, the Lord Chancellor or Master of the RoUs 
 being one. (as) The Commissioners are empowered to 
 cause a seal to be made for the purposes of the Act, and 
 to cause aU warrants for letters patent, and all instru- 
 ments and copies proceeding from the office, to be 
 sealed therewith. Judicial notice is taken of the seal. (&) 
 The Commissioners may from time to time make such 
 rules and regulations (not inconsistent with the provi- 
 sions of the Act) respecting the business of the office 
 and all matters and things which under the provisions 
 
 (a) 15 & 16 Vict. c. 83, s. 1. 
 
 (J) S. 2. 
 
OFFICE OF THE COMMISSIONEES. 171 
 
 of the Act are to be under their control and direction^ Chap. VII. 
 as may appear to them necessary and expedient for the 
 purposes of the Act. The rules are to be laid before 
 both Houses of Parliament within fourteen days if Parlia- 
 ment is sitting, and if Parliament is not sitting, then 
 within fourteen days after the next meeting of Parliar 
 ment; and the Commissioners are to cause a report to Commissioners 
 be laid annually before Parliament of all proceedings l^nuaUyto 
 under and in pursuance of the Act. (a) Parliament. 
 
 The Commissioners of the Treasury are to provide Treasury to 
 proper officers for the purposes of the Act. (b) It was ^"'^' 
 provided by the first set of rules (c) that the Great 
 Seal Patent Office and the office of the Commissioners 
 should be combined, and that the clerk of the Patents 
 for the time being should be the clerk of the Commis- 
 sioners for the purposes of the Act. 
 
 The Commissioners, with the consent of the Com- Commissioners 
 missioners of the Treasury, have power from time to time cierL. 
 to appoint such clerks and officers as they may think fit, 
 and to remove any clerks or officers so appointed, (^d) 
 
 A true copy under the hand of the patentee or Copies of 
 
 -. ,(>n T (. specifications, 
 
 applicant or agent ot the patentee or appucant ot &c., to be left 
 
 • r. .. T p 1 L ' n at the office, 
 
 every specification and ot every complete specifica- 
 tion, with the drawings accompanying the same, if 
 any, must be left at the office of the Commissioners 
 on filing. (e) 
 
 Transcripts of the letters patent are transmitted to the Transcript of 
 
 . letters patent 
 
 Director of Chancery in Scotland, upon payment of such tobeforwaided 
 fees as the Commissioners require, in the same manner 
 and to the same effect as letters patent passing under 
 
 (a) s. 3. (d) 15 & 16 Vict. c. 83, s. 5. 
 
 (J) s. 4. (e) 16 & 17 Vict. c. 115, s. 3. 
 
 (c) cl. 6. 
 
172 
 
 OFFICE OF THE COMMISSIONERS. 
 
 Chap. VII. 
 
 Copies of 
 specifications, 
 &c., to be 
 transmitted to 
 Scotland and 
 Ireland to be 
 evidence, 
 without pro- 
 duction of 
 originals. 
 
 Copies of 
 specifications 
 to be open to 
 inspection at 
 office of Com- 
 missioners, 
 and at Edin- 
 burgh and 
 Dublin. 
 
 the seal appointed by the Treaty of Union to be used 
 in place of the Great Seal of Scotland were formerly 
 recorded. Extracts from the records are furnished on 
 payment of the fees required by the Commissioners^ and 
 are received in evidence in Courts in Scotland, (a) 
 
 Certified printed copies under the seal of the Com- 
 missioners of all specifications, complete specifications, 
 and facsimile printed copies of drawings accompanying 
 them, if any, disclaimers and memoranda of alterations, 
 are transmitted to, and filed in, the Chancery Courts in 
 Scotland and Ireland, and certified copies or extracts 
 from such documents are furnished to aU persons re- 
 quiring the same, upon payment of such fees as the 
 Commissioners may direct, and are received in evi- 
 dence without further proof, or production of the 
 originals. (6) 
 
 The office of the Directory of Chancery in Scotland is 
 also the office of the Patent Commissioners, (c) 
 
 True copies of all specifications (other than provisional 
 specifications) disclaimers and memoranda of alterations 
 are open to the inspection of the public at the office and 
 at an office in Edinburgh and Dublin. Transcripts of all 
 letters patent are transmitted for enrolment in the Court 
 of Chancery in Dublin, and the transcript or exemplifica- 
 tion has the same effect as if the original letters patent 
 had been enrolled there, and all parties have their remedy • 
 by scire facias or otherwise, as if the letters patent had 
 been granted to extend to Ireland only, {d) The enrol- 
 ment office of the Court of Chancery in DubHn is also 
 the office of the Patent Commissioners, (e) 
 
 (a) 15 & 16 Vict. c. 83, s. 18. 
 (5) 16 & 17 Vict. C.I 15, s. 5. 
 (c) Second set of Rules, cl. 1. 
 
 (d) s. 29. 
 
 (e) Second set of Rules, cl. 4. 
 
OEFICE OF THE COMMISSIONERS. 173 
 
 True copies of all provisional specifications left at the Chap. Vll. 
 office of the Commissioners are open to the inspection copies of pro- 
 of the public at such times after the da^te of the record as fixations ^S^be 
 the Commissioners may direct, (a) op™ " inspec- 
 
 •' _ ^ ' tion. 
 
 All specifications, disclaimers and memoranda of alter- Specifications 
 ations are printed and published and sold as the Com- documents to 
 missioners think fit, as soon after filing as convenient. puiSished. ""^ 
 The Commissioners may present copies of all such publi- 
 cations to such public libraries and museums as they may 
 think fitj and may allow the person depositing or filing 
 any such specifioationj disclaimer or memorandum of altera- 
 tions to have any number not exceeding twenty-five of 
 the copies so printed and published, without pay- 
 ment, (jb) 
 
 Indexes of all specifications, disclaimers and memo- Indexes to be 
 
 -, n ■• ■ n • • J _Li printed and 
 
 randa of alterations are open to the mspection ot the published. 
 public, and the Commissioners have power to cause such 
 indexes to be printed and published and sold to the 
 public, (c) 
 
 A register of patents is kept at the Great Seal Patent Register of 
 
 ... patents to be 
 
 Ofiice ; all letters patent, the deposit and fihng oi speci- kept, 
 fications, disclaimers and memoranda of alterations, all 
 confirmations and extensions of letters patent, the expiry, 
 vacating or cancelling of letters patent, with the date, 
 and aU. other such matters affecting their validity as the 
 Commissioners may direct, are entered and recorded in 
 chronological order in it ; and such register or a copy of 
 it is open to the inspection of the public, (d) 
 
 The Lord Chancellor and Master of the RoUs and the Fees to law 
 
 . officers. 
 
 Commissioners have power to appoint the fees to be paid 
 
 (a) 16 & 17 Vict. c. 115, s. 2. (d) a. 34. See also post, 
 
 (6) s. 30. chapter on Registration, 
 
 (c) s. 32. 
 
174 OFFICE OF THE COMMISSIONERS. 
 
 Chap. VII. to tte law officers in cases of opposition to the granting 
 of letters patent, and in cases of disclaimers and memo- 
 randa of alterations and for office and other copies of 
 documents, (a) 
 
 (a) s. 47. And see generally as to fees, ss. 48 — 51. 
 
CHAPTER VIII. 
 
 OF EXTENSION OF THE TEEM OF LETTERS PATENT. 
 
 T3BP0EB the Act of the 5th and 6th Will. IV. c. 83 Chap. viii. 
 -'-^ was passed, the only means of obtaining an exten- 5 ^ g ^^ jy 
 sion or renewal of the term of letters patent was by an "■ ^^^ 
 Act of Parliament. The cases in which patents hare 
 been so prolonged will be found in 1 Webs. P. R. 37. 
 
 By s. 4 of the above-mentioned Act power was giyen Mode of 
 
 TT.,~ . „-, proceeding in 
 
 to a patentee to petition the Judicial Committee of the case of applica- 
 Privy Council for an extension of the term of using and prolongation of 
 vending the invention, and it was provided that " the Ltent™ ° ^ 
 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 authorized and empowered if he shall 
 think fit, to grant new letters patent for the said inven- 
 tion for a term not exceeding seven years after the 
 expiration of the first term, any law, custom or usage 
 to the contrary in any wise 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 in the above section was repealed by 2 & 3 Vict. 
 
 - . T T U. 67, s. 1. 
 
 2 & 8 Vict. c. 67, s. 1, which, after reciting that it had 
 happened since the passing of the said Act, and might 
 
176 
 
 EXTENSION OP THE TEEM 
 
 Chap. VIII. 
 
 Repealing 
 proTision re- 
 quiring the 
 application hy 
 petition to be 
 prosecuted 
 with effect 
 before the ex- 
 piration of the 
 term of the 
 patent. 
 
 happen again^ that parties desirous of obtaining an ex- 
 tension of the term granted in letters patent of which 
 they were possessed and who might have presented a 
 petition for such purposes in manner by the said recited 
 Act directed before the expiration of the said term might 
 nerertheless be prevented by causes over which they had 
 no control, from prosecuting with effect their application 
 before the Judicial Committee of the Privy Council ; and 
 that it was expedient therefore that the said Judicial 
 Committee should have power, when under the circum- 
 stances of the case they should see fit, to entertaiu such 
 application and to report thereon, according to the pro- 
 visions of the said recited Act, notwithstanding that 
 before the hearing of the case before them the terms of 
 the letters patent sought to be renewed or extended 
 might have expired, it was enacted " that so much of the 
 said recited Act as provides that no extension of the 
 term of letters patent shall be granted as therein men- 
 tioned, if the application by petition for such extension 
 be not prosecuted with effect before the expiration of the 
 term originally granted in such letters patent, shall bd 
 repealed." 
 
 This enactment was the result of the decision in Bod- 
 mer's Patent, (a) There the petition was duly presented 
 on the 21st of May, 1838, and notices of intention to 
 apply on the 26th of June for a day to be fixed for the 
 hearing were given by advertisement. On that day two 
 caveats were entered, and the persons entering them 
 being entitled to four weeks' notice of the time appointed 
 for hearing, the petition could not be heard within the 
 term of the ordiaary sitting of the committee, and the 
 
 (a) 2 Moo. P. 0. C. 471 ; 1 Webs. P. R. 740. 
 
OF LETTERS PATENT. 177 
 
 letters patent would have expired before the next sittings. Chap. VIII. 
 Under these circumstances the 17th of August was fixed 
 for hearing the petition^ but on that day a sufficient 
 number of members could not be got together to form a 
 council. On the application being made on the 29th of 
 November the Attorney-General took the objection that 
 the application had not been prosecuted with effect before 
 the expiration of the term of the letters patent, and the 
 objection was held to be fatal. 
 
 By section 2, it is enacted " that it shall be lawful for Term of patent 
 the Judicial Committee of the Privy Council, in all cases extended in 
 where it shall appear to them that any application for an though the ' 
 extension of the term granted by any letters patent, the such extension 
 petition for which extension shall have been referred to ^°tif efflot"*^*^ 
 them for their consideration has not been prosecuted with lieforeiie 
 
 ^ expiration 
 
 effect before the expiration of the said term from any thereof. 
 other causes than the neglect or default of the petitioner, 
 to entertain such application, and to report thereon as by 
 the said recited Act provided, notwithstanding the term 
 originally granted in such letters patent may have expired 
 before the hearing of such application ; and it shall be 
 lawful for Her Majesty, if she shall think fit, on the report of 
 the said Judicial Committee recommending an extension 
 of the term of such letters patent, to grant such extension, 
 or to grant new letters patent for the invention or inven- 
 tions specified in such origiaal letters patent for a term 
 not exceeding seven years after the expiration of the 
 term mentioned in the said original letters patent : Pro- 
 vided always, that no such extension or new letters patent 
 shall be granted if a petition for the same shall not have 
 been presented as by the said recited Act directed before 
 the expiration of the term sought to be extended, nor in 
 case of petitions presented after the 30th day of Novem- 
 
 N 
 
178 EXTENSION OF THE TERM 
 
 Chap. viii. ber^ 1839j unless such petition shall be presented six 
 
 calendar months, at the least, before the expiration of 
 
 such term, nor in any case, unless sufficient reason 
 
 shall be shown to the satisfaction of the said Judicial 
 
 Committee for the omission to prosecute with effect the 
 
 said application by petition before the expiration of the 
 
 said term." 
 
 Limit of time. The application is "prosecuted with effect" if it is 
 
 made, and the report of the Judicial Committee is obtained 
 
 before the expiration of the original term, (a) 
 
 7 & 8 Vict. By another Act (7 and 8 Vict. c. 69, s. 2), after recit- 
 
 On petition ing that it was expedient for the further encouragement 
 
 may mant^Mi °f inventions in the useful arts, to enable the time of 
 
 extension of monopoly in patents to be extended in cases in which it 
 
 patent tenns m '^ •' i^ 
 
 certain cases, can be satisfactorily shown that the expenses of the in- 
 vention have been greater than the time then Hmited by 
 the law would suffice to reimburse ; it was enacted " that 
 if any person having obtained a patent for any invention 
 shall, before the expiration thereof, present a petition to 
 Her Majesty in Council, setting forth that he has been 
 unable to obtain a due remuneration for his expense and 
 labour in perfecting such invention, and that an exclu- 
 sive right of using and vending the same for the further 
 period of seven years in addition to the term in such 
 patent mentioned wiU not suffice for his reimbursement 
 and remuneration ; then, if the matter of such petition 
 shall, by Her Majesty, be referred to the Judicial Com- 
 mittee of the Privy Council, the said committee shall 
 proceed to consider the same after the manner and in the 
 usual course of its proceedings touching patents ; and if 
 the said committee shall be of opinion, and shall so report 
 to Her Majesty, that a further period greater than seven 
 
 (a) Ledsam v. Russell, 1 H. L. C. 687. 
 
OF LETTBES PATENT. 179 
 
 years extension of the said patent term ouglit to be Chap. viii. 
 granted to the petitioner, it shall be lawful for Her 
 Majesty-j if she shall so think fit, to grant an extension 
 thereof for any time not exceeding fourteen years, in like 
 manner and subject to the same rules as the extension for 
 a term not exceeding seven years is now granted under 
 the powers of the said Act/' 
 
 It is then provided that nothing therein contained Her Majesty 
 "shall prevent the said Judicial Committee from report- tension^fora^" 
 ing that an extension for any period not exceeding seven Jtm^thS"' 
 years should be granted, or prevent her Majesty from P™?^"!- 
 granting an extension for such lesser term than the peti- 
 tion shall have prayed." (a) 
 
 The provisions of the above Acts as to prolongation provisions of 
 apply to patents granted under 16 and 16 Vict. c. 83. c.^| Y&3^' 
 Section 40 of that Act provides,- " that it shall be lawful ^'feb^vflr""^ 
 for Her Majesty to grant any new letters patent as in c. 69, as to 
 the said Acts mentioned ; and in the granting of any to apply to 
 
 _ _ . . patents under 
 
 such new letters patent Her Majesty's order m council this Act. 
 shall be a sufficient warrant and authority for the sealing 
 of any new letters patent, and for the insertion in 
 such new letters patent of any restrictions, conditions, 
 and provisions in the said order mentioned ; and the Lord 
 Chancellor, on the receipt of the said order in council, 
 shall cause letters patent, according to the tenor and 
 effect of such order, to be made and sealed in the manner 
 herein directed for letters patent issued under the war- 
 rant of the law-officer. Provided always that such new 
 letters patent shall extend to and be available in and for 
 such places as the original letters patent extended to and 
 were available in; provided also that such new letters 
 patent shall be sealed, and bear date as of the day after 
 (a) 7 & 8 Vict. c. 69, s. 3. 
 
180 EXTENSION OF THE TEEM 
 
 Chap. viii. the expiration of the term of the original letters patent 
 
 which may first expire. 
 Form of Report The following is the report and order in council, made 
 Council. in pursuance of the above section in Heath's Patent : (a) 
 
 "Their lordships do agree humbly to report to Her 
 Majesty, as their opinion that (in case your Majesty 
 should think fit) a further extension of the letters patent 
 for England, Wales, and the town of Berwick-upon- 
 Tweed, obtained by Josiah Marshall Heath, now deceased, 
 and bearing date at Westminster, 15th of April, 1839, 
 the same being now vested in the petitioner, Charlotte 
 Catherine Heath, widow and administratrix of Josiah 
 Marshall Heath, ought to be granted to Charlotte Cathe- 
 rine Heath, and that such extension should be for the 
 term of seven years from and after the expiration of the 
 term granted by the original letters patent." And the 
 report having been taken into consideration, it was or- 
 dered, " That the Right Honourable the Lord Chancellor, 
 upon the receipt thereof, do cause new letters patent, 
 according to the term and effect of this order, to be made 
 and sealed for such part of the United Kingdom of Great 
 Britain as the original letters patent extended to and 
 were available in, namely, for England, Wales, and the 
 town of Berwick-upon-Tweed, for ' certain improvements 
 in the manufacture of iron and steel,' as described in the 
 patent granted to Josiah Marshall Heath, and bearing 
 date at Westminster on the 16th day of April, 1839, and 
 such new letters patent are to be granted to Charlotte 
 Catherine Heath, in whom the legal interest of the ori- 
 ginal letters .patent is now vested, for the further term of 
 seven years from and after the expiration of the term 
 granted in the original letters patent, and whereof the 
 (a) 8 Moo. P, C. 0. 225. 
 
OF LETTEES PATENT. 181 
 
 Right Honourable the Lord Chancellor and all other per- Chap. VIII. 
 sons whom it may concern are to take notice and govern 
 themselves accordingly." 
 
 It was doubted whether the provision of 15 & 16 Vict. Removing 
 c. 83, s. 40, extended to the making and sealing of new pov^sionVof 
 letters patent, where such new letters patent were granted l^^ "s^Mt- 
 by way of extension of the term of letters patent issued '°& ^^^ making 
 
 -"^ and sealing of 
 
 before the commencement of the Act, and as it was con- "^"^ letters 
 sidered expedient that such new letters patent granted Sirther term. 
 by way of extension should be granted according to the 
 provisions of the Act, it was by 16 & 17 Vict. c. 115, s. 
 7, provided, " that where Her Majesty's Order of Council 
 for the sealing of new letters patent shall have been made 
 after the commencement of the said Act, the said pro- 
 vision of the said Act for making and sealing in manner 
 aforesaid of new letters patent, shall extend and shall 
 as from the commencement of the said Act be deemed to 
 have extended to the making and sealing in manner 
 aforesaid -of new letters patent for a further term, as well 
 where the original letters patent were made before as 
 where such original letters patent have been issued since 
 the commencement of the said Act." 
 
 The Judicial Committee of the Privy Council have Jurisdiction, 
 somewhat similar powers of discretion in considering 
 whether or not to grant extension of the term of a patent 
 to those formerly exercised by the three branches of 
 Parliament, (a) and they will only exercise this power on 
 the most special grounds alleged and proved in reference 
 to each case, (b) 
 
 After the terra of a patent has once been extended, and As to renewed 
 
 n 1 T T • 1 /-( letters patent. 
 
 new letters patent have been granted, the Judicial Com- 
 
 (a) Morgan's Patent, 1 Webs. (6) Jones' Patent, 1 Webs. P. 
 
 P. R. 739. R. 579. 
 
182 
 
 EXTENSION OF THE TEEM 
 
 Chap. VIII. 
 
 As to petition 
 to revoke 
 order; 
 
 Extension not 
 a mattei- of 
 course ■when 
 no opposition. 
 
 mifctee Have no power to recommend an extension of the 
 term of the new patent, (a) 
 
 Under 3 & 4 Will. IV. c. 41, the fourth section of 
 which is as follows : " It shall be lawful for His Majesty 
 to refer to the said Judicial Committee for hearing on 
 consideration any such other matters whatsoever as His 
 Majesty shall think fit, and such committee shall there- 
 upon hear or consider the same, and shall advise His 
 Majesty thereon in manner aforesaid," it has been de- 
 cided that the Judicial Committee have power to hear 
 and consider a petition which has been referred to them 
 by the Crown, prayiag that an order in council, made 
 upon their recommendation, to extend letters patent, 
 may be revoked, and also that any warrant for making 
 new letters patent may be annulled. (6) 
 
 It is anything but a matter of course that an application 
 for extension should be granted where there is no oppo- 
 sition, either by the public or by the Attorney General on 
 behalf of the Crown, (c) The Judicial Committee will not 
 place themselves precisely in the situation of the legislature, 
 and refuse extension where an Act of Parliament would 
 not have been granted ; (d) but the applicant must show 
 that he is entitled to extension on the usual grounds with 
 as much accuracy as if the petition had been opposed ; (e) 
 and the circumstances of each case, (/) and the inerits of 
 the invention will be carefully examined, (g) 
 
 (d) Goucher's Patent, 2 Moo. 
 P. C. C. (N. S.) 532. 
 
 (V) Re Schlumherger, 9 Moo. 
 P. C. C." 1. 
 
 (c) Jones' Patent, 1 Webs. 
 P. K. 579 ; CardweUs Patent, 
 10 Moo. P. C. C. 490. 
 
 (d) Morgan's Patent, 1 Webs. 
 P. R. 739. 
 
 (e) Derosne's Patent, 4 Moo. 
 P. C. C. 418 ; HmibalTs Patent, 
 9 Moo. P. C. 0. 393. 
 
 (/) Petitt Smith's Patent, 7 
 Moo. P. 0. C. 137. 
 
 (g) Perkins' Patent, 2 Webs. 
 P. R. 181; Morgan's Patent, 1 
 Webs. P. R. 739. 
 
Effect of ex- 
 tension 
 
 OF LETTERS PATENT. 183 
 
 By the joint operation of the Acts of 5 & 6 Will. IV. Chap, viil 
 c. 83, and 16 & 17 Vict. c. 115^ s. 7, the extension of a 
 patent is the same as a new grant, (a) 
 
 Where separate patents had been granted for an in- on sereral 
 vention in England^ Scotland^ and Ireland, previous to 
 the passing of the Patent Law Amendment Act for terms 
 expiring at the same date, and new letters patent reciting 
 the separate original patents were granted, extending for 
 a term of five years the privileges granted by the three 
 original patents, one of which was void for want of 
 povelty, it was held that the effect was the same as if the 
 three patents had been separately extended, and that the 
 fact of one of the patents being void would not prevent 
 the new letters patent being valid as an extension of the 
 other patents, (b) 
 
 As all that it is necessary for the patentee to do is to Date of new 
 prosecute his claim with effect before the expiration of 
 the term of the original letters patent, the new letters 
 patent will not be void because they are dated after the 
 expiration of that term, (c) 
 
 Where the original patent has been taken out for a Part of patent 
 variety oi inventions, and they nave not all come into extended. 
 use, an extension of the part only which is useful may 
 be recommended if the other requisites to extension are 
 present, {d) It is not quite clear whether in such a case 
 the patentee will be required to disclaim, the useless parts. 
 In Bodmer's Patent, (e) the original patent embraced and 
 
 (a) Betts' Patent, X Moo. P. (c) Ledsam v. Russell, 1 H. L. 
 
 C. C. (N. S.) 57 ; Aubi's Patent, C. 687. 
 
 9 Moo. P. C. 0. 43 ; Bodmer's (^d) lee's Patent, 10 Moo. P. 
 
 Patent, 8 Moo. P. C. C. 282. C. C. 226 ; Bodmer's Patent, 8 
 
 (J) Bovill V. Finch, L. K. 5 Moo. P. C. C. 282. 
 C. p. 523. (e) 8 Moo. P. C. C. 282. 
 
184 
 
 EXTENSION OF THE TEEM 
 
 Chap. VIII. 
 
 Validity of 
 patent not 
 adjudicated 
 upon by the 
 Judicial Com- 
 mittee. 
 
 Bad patent not 
 extended. 
 
 claimed as of the invention of the patentee a great number 
 of distinct matters, many of which were of no practical 
 utility, and one of which only had been actually used by 
 the inventor. There were subsequent patents for im- 
 provements by the same patentee, and the original patent 
 could not be worked without them. An extension of so 
 much of the patent as related to the useful parts was 
 recommended upon the petitioner undertaking to disclaim 
 all other parts. In Lee's Patent {a) no disclaimer was 
 required. 
 
 It is not the duty of the Judicial Committee upon an 
 application for extension to adjudicate upon the validity 
 or invalidity of the patent itself; (6) for the extension 
 decides nothing as to the validity of the patent ; (c) nor 
 will they enter into any questions as to the want of 
 novelty and utility. The new letters patent are subject 
 to any objections on these grounds which may exist to 
 the original letters patent, and imless it is contended that 
 the patent is altogether useless they will not be con- 
 sidered. (cZ) It must, however, be shown that there is 
 such an amount of novelty and utility as will entitle the 
 petitioner, if everything else is satisfactory, to exten- 
 sion, (e) 
 
 The meaning of the specification and the sufficiency 
 of the subject matter must be ascertained, (/) and if 
 the patent is manifestly bad it will not be extended. 
 
 Patent, 1 
 
 (a) 10 Moo. P. 0. C. 230. 
 
 (b) McDougaVs Patent, L. K. 
 2 P. C. 1 ; Beits' Patent, 1 Moo. 
 P. C. C. (N". S.) 49; HeatKs 
 Patent, S Moo. P. C. C. 217; 
 Pinkii.f Patent, 12 Jur. 233. 
 
 (c) Woodcraft's Patent, 2 
 Webs. P. R. 81. 
 
 (d) Galloway's 
 Webs. P. E. 725. 
 
 (e) Saxhy's Patent, L. K. 3 
 P. C. 292. 
 
 (/) McDmigaVs Patent, L. R. 
 2 P. C. 1. 
 
OF LETTERS PATENT. 185 
 
 In Woodcrofti' s Patent (a) Lord Brougham said : " Where Chap. Vill. 
 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, 
 their lordships will not grant an extension ; j&rst, because 
 they do not see merit, 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, 
 trouble, and expense either of bringing a scire facias to 
 repeal the letters patent, or of sustaining an action for 
 infringement. But where the matter hangs very 
 doubtful, where there is conflicting evidence, where 
 upon the construction of the specification on 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 recom- 
 mending an extension, merely because elsewhere the 
 validity of the patent may reasonably be contested." (6) 
 
 Nor is it an objection that there is a suit pending Lis pendens, 
 respecting the validity of the patent, (c) and in such a 
 case, if extension is granted, it will be for a longer period 
 
 (a) 2 Webs. P. R. 30. (c) Kay's Patent, 3 Moo. P. 
 
 (J) And see also Betts' Pa- C. C. 24 ; Heath's Patent, 8 Moo. 
 tent, 1 Moo. P. C. C. (N. S.) P. C. C. 217. 
 49 ; HiUs Patent, ib. 258 ; 
 Erards Patent, 1 Webs. P. R. 557. 
 
186 
 
 EXTENSION OF THE TEEM 
 
 Chap. VIII. 
 
 Cognate 
 patents. 
 
 Persons to 
 whom exten- 
 sion granted, 
 and who may- 
 petition. 
 
 Administi'ators 
 and executors. 
 
 Trustees of 
 company. 
 
 Assignees. 
 
 than usual, as some time must elapse before the 
 petitioner can avail himself of the extension, (a) 
 
 Where two cognate patents of different dates are ex- 
 tended, the extension will be granted, so that the new 
 terms shall expire on the same day. (&) 
 
 The persons to whom extension is granted are those in 
 whom the legal estate in the letters patent is vested at 
 the time of making the application, (c) In one case where 
 the petition was presented by the patentee and his mort- 
 gagees, extension was granted to the patentee alone, (d) 
 
 Extension has been granted to the administratrix of a 
 patentee, (e) to the executrix, (/) to the trustees of a 
 joint-stock company, (§') where the patentee joined in 
 the petition. Extension has also been granted to 
 trustees when the patentee had parted with all his in- 
 terest, (h) 
 
 It was at one time considered doubtful whether ex- 
 tension could be granted to the assignee of a patent. It 
 was therefore by 7 & 8 Vict. c. 69, s. 4, enacted that it 
 should be lawful for Her Majesty on the report of the Judi- 
 cial Committee to grant extension either to an assignee 
 or assignees, or to the origiaal patentee or patentees, 
 or to an assignee or assignees and original patentee or 
 patentees conjointly, and by s. 7 of the same Act new 
 
 (a) Heath's Patent, 8 Moo. 
 P. C. 0. 224. 
 
 (6) Johnson and Atkinson's 
 Patent, L. R. 5 P. C. 87. 
 
 (c) Souihworth's Patent, 1 
 Webs. P. R. 488; Wright's 
 Patent, ih. 563. 
 
 (d) BovilVs Patent, 1 Moo. 
 P. C. C. (N. S.) 348. 
 
 (e) Downton's Patent, 1 Webs. 
 
 P. R. 565; Heath's Patent, 8 
 Moo. P. C. C. 217. 
 
 (/) Porter's Patent, 2 Webs. 
 P. R. 193. 
 
 (g) Petitt Smith's Patent, 7 
 Moo. P. 0. C. 138. 
 
 Qi) Claridge's Patent, 7 Moo. 
 P. C. C. 138; Napier's Patent, 
 13 Moo. P. C. C. 543. 
 
OF LBTTEBS PATENT. 187 
 
 letters patent granted before the passing of the Act were Chap. viil. 
 declared to be valid, (a) 
 
 The rule followed by the Judicial Committee in granting Reasons for 
 extension to assignees is laid down by Lord Brougham in tension to 
 Morgan's Patent ; (b) " That their lordships by taking into tereft"or' "' 
 their view and favourably listening to the application of P^red tfVot" 
 the assignee are, though not directly, yet mediately and 
 consequentially, as it were, giving a benefit to the in- 
 ventor, because if the assignee is not remunerated at all, 
 it might be said that the chance of the patentee of 
 making an advantageous conveyance to the assignee 
 would be materially diminished, and consequently his 
 interest damnified. For this reason consideration has 
 been given to the claims of the assignee who has an in- 
 terest in the patent." (c) And in Whitehouse's Patent, (d) Merit of 
 his lordship said that the merit of the assignee in patro- ^ateontzing 
 nizing the inventor, in expending money till he was P**^°*®^- 
 enabled to complete his invention, and in liberally 
 supplying the funds which were requisite for the purpose 
 of carrying the invention into execution, had been taken 
 into consideration, (e) 
 
 Where the patented invention was well known abroad Extension re- 
 
 ■ • 1 T 1 fused where 
 
 and neither the patentee nor his assignee had been at assignee's risk 
 any great risk or expenditure in introducing it into this 
 country, extension was refused. (/) So too, where the 
 assignee had taken an assignment of four-fifths of the 
 
 (a) See Ledsam v. Bussell, 1 (d) 1 Webs. P. R. 471. S. C. 
 
 H. L. C. 687. nom. RusseUs Patent, 2 Moo. 
 
 (J) 1 Webs. P. E. 738. P. C. C. 496. 
 
 (c) See also Pitman's Patent, ■ (e) See also Norton's Patent, 
 
 L. R. 4 P. C. 87, where this 1 Moo. P. C. C. (¥. S.) 339. 
 rule was cited and approved (/) Claridge's Patent, 7 Moo. 
 
 of. P. C. C. 394. 
 
188 EXTENSION OF THE TEEM 
 
 Chap. VIII. patent, for a small consideration, only a few months 
 before its expiration. ( a) 
 
 Executor of an The executor of an assignee may petition for exten- 
 
 petilon! ^^^ sion, (&) and there does not seem to be any objection to 
 a petition by an equitable assignee, (c) 
 
 Importer of an The importer of an invention is an inventor and is en- 
 titled to petition. In Berry's Patent,{d) Lord Brougham 
 said : " The patent law is framed in a way to include two 
 species of public benefactors ; the one, those who benefit 
 the public by their ingenuity, industry and science, and 
 invention and personal capability ; the other, those who 
 benefit the public, without any ingenuity or invention 
 of their own, by the importation of the results of foreign 
 inventions. Now the latter is a benefit to the public 
 incontestably, and therefore they render themselves en- 
 titled to be put upon somewhat if not entirely the same 
 footing as inventors. In this case, certain parties have 
 by their adventurous spirit and by the outlay of capital, 
 benefited the public in the proportion of the value of 
 the foreign invention in question, which but for that 
 adventurous spirit and outlay of capital would not have 
 been available to the people of this country. That there- 
 fore is to be considered as a solid claim to the exercise 
 of the quasi legislative power which the statute vests 
 in this committee. . . . Upon all principles and all 
 analogy, their lordships are of opinion, that we cannot 
 do otherwise than regard this as a solid ground for the 
 application made on the part of the importers.'' In 
 
 (a) Normand's Patent, L. E. (c) Noble's Patent, 7 Moo. 
 
 3 P. C. 193. P. C. C. 191. 
 
 (6) Bodmer's Patent, 6 Moo. (rf) 7 Moo. P. C. C. 189, 
 
 P. C. C. 468 ; HonihalVs Patent, 
 9 Moo. P. C. C. 378. 
 
OF LETTERS PATENT. 189 
 
 Newton's Patent (a) extension was granted to a peti- Chap. Vlll. 
 tioner who had obtained the letters patent as agent and » ~~f 
 trustee for the foreign patentee. foreign 
 
 But the merits of the inventionj ( b ) and all the antece- 
 dent circumstances (c) will be enquired into. 
 
 An alien resident abroad who was interested in an Petition to re- 
 English patent by a foreign inventor in respect of sales ^°''^' 
 of and licences to use the patent was held 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 EngHsh patent and to recall the warrant for 
 sealing it. {d) 
 
 By s. 25 of 16 and 16 Vict. c. 83^ it is enacted that Letters patent 
 " where upon any application made after the passing of United King- 
 the Act, letters patent are granted in the United Kingdom patented 
 for or in respect of any invention first invented in any tion?notto^° 
 foreign country or by the subject of any foreign power or ™'>ti°'ie i" 
 state, and a patent or like privilege for the monopoly or e^^pii-ation of 
 exclusive use or exercise of such invention in any foreign patent. 
 country is there obtained before the grant of such letters 
 patent in the United Eangdom, aU rights and privileges 
 under such letters patent shaU (notwithstanding any term 
 in such letters patent limited) cease and be void imme- 
 diately upon the expiration or other determination of the 
 term during which the patent or like privilege obtained 
 in suchloreign country shall continue in force, or where more 
 than one such patent or like privilege is obtained abroad 
 immediately upon the expiration or determiaation of the 
 term which shall first expire or be determined of such 
 
 (a) 14 Moo. P. C. C. 156. (c) Johnson's Patent, L. R. 4 
 
 (6) Claridge's Patent, 7 Moo. P. C. 80. 
 P. C. C. 394. {d) Re Schlumberger, 9 Moo. 
 
 P. C. C. 1. 
 
190 EXTENSION OE THE TEEM 
 
 Chap. viit. several patents or like privileges : Provided always tliat 
 no letters patent for or in respect of any invention for 
 which any such patent or like privilege as aforesaid 
 shall have heen ohtained in any foreign country, and 
 which shall be granted in the said United Kingdom 
 after the expiration of the term for which such patent 
 or privilege was granted or was in force, shall be of any 
 validity." 
 
 The earlier part of this section only applies to cases 
 where patents have been granted in foreign countries 
 before the grant of the patent in the United Kingdom, 
 HBit of and the words in the proviso " any such patent" refer to 
 
 ^(SJseo. the entire description of the patents mentioned ia the 
 
 foregoing part of the section and to no others. This 
 construction renders the section consistent throughout 
 and applicable in every part of it to the same subject. 
 Where a patent is taken out in a foreign country before 
 a patent for the same invention in the United Kingdom 
 the latter patent is to terminate at the same time as the 
 foreign patent. Where the term in a foreign patent has 
 expired, any grant of letters patent in the United Kingdom 
 made after that period is to be of no value, (a) And in 
 a late case it was said that the meaning of the proviso is 
 that where a patent is taken out in a foreign country 
 before the grant of letters patent in England and the 
 foreign patent has expired, then that the patent in Eng- 
 land shall cease to be in force, and that where one " such " 
 patent or the old patent had been obtained abroad, then 
 the English patent should!^e determined at the expiration 
 of the earliest of the letters p atent granted in^aT foreign 
 country. (&) 
 
 (a) Beits' Patent, 1 Moo. P. C. (J) Blake's Patent, L. R. 4 
 
 C. (N. S.) 49. P. C. 537. 
 
OF LETTERS PATENT. 191 
 
 /"^ If it were not the case that thia clause only applies to Chap. viil. 
 
 \ a case where a patent has been previously obtained in a 
 
 ^ foreign country, an English patentee who takes out a 
 
 j patent for an invention, invented in this country could 
 
 { not venture to take out a patent in a foreign country if 
 
 the foreign term were less than the English, (a) 
 
 Where the foreign patent is th e first taken o ut and isl Foreign patent 
 determined by act of law abroad, the English patent alsoUaw?™"^ ^ 
 is determined. (&) But it appears that any part of the f 
 English patent which is not identical with the foreign / 
 patent would still remain in force, (c) "~^ 
 
 j^ An English patentee, who after taking out a patent in Engiisli p^H 
 this country takes out a patent abroad in addition, is in prejudicePiP 
 jio sens,e Ja„be prejudiced, either with respect to his. takfng"™ ^ 
 original patent or with respect to any application which "'"^'S'' patent. 
 -he may be advised to make for a renewal of it. ((^) 
 
 The question as to the jurisdiction of the court has often Jurisdiction of 
 been discussed, and it may now be taken to be clearly 
 settled, that where the foreign patent was obtained before 
 the English, the court has no power to entertain an appli- 
 cation for extension after the foreign patent has expired ; 
 but that where the English patent was the first obtained, 
 it has such power, (e) 
 
 The policy of the Act, it was said by Sir J, T. Coleridge, Policy of the 
 " is to prevent in the case of inventions made and patented 
 in any foreign country, the continuance of a monopoly in 
 
 (a) Poole's Patent, L. R. 1 P. C. C. (N. S.) 49; Poole s 
 
 P. C. 518. Patent, L. K. 1 P. C. 518. 
 
 (J) Daw V. Eley, L. K. 3 Eq. (e) See tlie judgment in Wi- 
 
 510. narCs Patent, L. R. 4 P. C. 93, 
 
 (c) Ih. and Blake's Patent, ib. 535, in 
 
 (d) Johnson's Patent, L. R. 4 which all the antecedent cases 
 P. C. 80 ; Betts' Patent, 7 Moo. are examined. 
 
192 
 
 EXTENSION OF THE TEEM 
 
 Chap. VIII. this Country by virtue of any patent subsequently granted 
 here beyond the time when the discovery shall have 
 become public property in the foreign country ."(a) And 
 Sir W. P. Wood, V.O.j said: "Now in looking at s. 
 25 one sees at once that the object was to prevent the 
 subjects of this kingdom from being fettered in their right 
 to compete with each other in the production and manu- 
 facture of different articles, when it was open to foreigners 
 to enter into such competition without being fettered by 
 any exclusive rights claimed by an inventor and patentee, 
 or by the additional price which must be imposed upon 
 C the article in consequence of the patent right. The object,"" 
 J I say, is to prevent the English manufacturer from being 
 fettered while the foreigner remains free." (6) 
 Foreign patent Where the foreign patent has been taken out very 
 shortly after the date of the English patent and is allowed 
 to expire, although the case is not strictly within the 
 provisions of this section, yet it is within the spirit of it, 
 and extension will not be granted, (c) * 
 
 An English patent wiU not be extended on the mere 
 chance of extension being granted abroad. ((^) 
 
 Sir W. P. Wood, V. 0., remarked, in T)aw v. Eley,{e) 
 that the provision of this section is not pursued to its 
 proper logical consequences in the Act, which only deals 
 with the case in which a foreign patent has been granted 
 and determined ; whereas, if no foreign patent has ever 
 
 taken out 
 shortly after 
 English. 
 
 Act not logic- 
 ally consistent, 
 
 (a) HilVs Patent, 1 Moo. P. C. 
 C. (N. S.) 258. 
 
 (J) Daw y. Eley, L. R. 3 Bq. 
 510 ; Normand's Patent, L. E. I 
 P. C. 193; JolmsorCs Patent,'U.'&. 
 4 P. C. 75 ; WinarCs Patent, ib. 
 94 ; Blake's Patent, ih. 535. 
 
 (c) Newton's Patent, 15 Moo. 
 
 P. C. C. 176; Winan's Patent, 
 L. E. 4 P. C. 98 ; Blake's Pa- 
 tent, ib. 537. 
 
 (^) Normand's Patent, L. R. 
 3 P. C. 193; Winan's Patent, 
 L. R. 4 P. C. 97. 
 
 (e) L. R. 3 Eq. 510. 
 
OF LETTERS PATENT. 193 
 
 been granted, any number of foreigners may be manufac- Chap. vill. 
 turing the article abroad, while English manufacturers ' 
 may be exposed, by the existence of a patent in this 
 country, to the very difficulty from which this section 
 professes to reliere them, and- that it undoubtedly does 
 appear very hard to prevent the English manufacturer 
 from having the benefit of manufacturing that which all 
 the rest of the world can manufacture at their pleasure ; 
 and yet to say that if it is protected for a certain limited 
 time abroad, then, and then only, when that protection 
 has ceased, shall the English manufacturer become free. 
 This argument was raised in Blake's Patent, (a) where it 
 was contended that there is not much difference between 
 allowing a foreign patent to expire, and not taking out a 
 foreign patent at all. The difference was there pointed 
 out to be that where a patentee takes out a patent for his 
 invention abroad, he is taking active measures to make 
 the invention known in the country in which he takes out 
 such*patent ; and the Legislature has not said that no 
 patent shall be granted in England for a foreign inven- 
 tion, unless the inventor shall have taken out a patent in 
 some other country, and that if they had so provided, it 
 would in effect be prohibiting altogether the grant of a 
 patent for a foreign invention. 
 
 The grounds upon which extension of the term of Grounds of 
 letters patent are granted were said by Lord Eomilly, in generally. 
 Norton's Patent, {b) to have reference to the inventor 
 himself; and to be, in the first place, to reward him for 
 the peculiar ability and industry he has exercised in mak- 
 ing the discovery; in the second place, to reward him, 
 because some great benefit of an unusual description has 
 
 (a) L. K. 4 P. C. 538. (J) 1 Moo. P. C. C. (N. S.) 343. 
 
 O 
 
194 EXTENSION or THE TEEM 
 
 Chap. VIII. by him'been conferred upon the public through the inven- 
 tion itself; or lastly, because the inventor has not been 
 sufficiently remunerated by the profits derived from his 
 strenuous exertions to make the invention profitable, and 
 that all these grounds proceed upon the supposition that 
 the invention is new and useful. And Lord Langdale, in 
 Pinhus' Patent, (a) said that what was usually taken into 
 consideration was, first, the meritof the invention; secondly, 
 the utility of the machinery which has been invented ; 
 and lastly, whether the patentee has received a sufficient 
 remuneration for the merit which he has displayed, (b) 
 Interests of Where a patentee agreed with a company, who exclu- 
 
 public con- 
 sulted, sively worked his patent, that he would not during the 
 
 continuance of the term grant any other licence or 
 licences than the licence already granted to the company, 
 or otherwise permit or suffer any person or persons other 
 than the said company to make or put ia practice the said 
 invention within a certain locality, and that at the deter- 
 mination of the letters patent he would _ use his interest 
 to obtain a renewal of them, and, in case of obtaining a 
 renewal, would observe and fulfil the covenants contained 
 in the agreement ; extension was refused, on the ground 
 that such an agreement manifestly interfered with the 
 public interest, and was at variance with the spirit of the 
 law under which the application was made, (c) So, too, 
 where it appeared that the real applicants were a company 
 who had bought the patent with others founded on it, for 
 the purposes of trade, and not for any purpose by which 
 any benefit could be derived by the original inventor, who 
 not only had long since parted with all interest in the 
 
 (a) 12 Jur. 234. (c) CardwelVs Patent, 10 Moo. 
 
 (6) McDougal's Patent, L. R. P. C. C. 490. 
 2 P. C. I. 
 
OF LBTTEES PATENT. 195 
 
 patentj but was dead at the time tlie application was Chap. viil. 
 madoj extension was refused, (a) 
 
 It is not necessary to show that there is case enous-h Merit of in- 
 
 „ . . Tentor. 
 
 for an Act of Parliament^ as there are many cases that Amount of 
 " would never have prevailed upon the legislature to make 
 a new personal law prolonging a monopolyj which never- 
 theless might seem meritorious enough in respect of the 
 individual^ beneficial enough inrespect of the public^ and de- 
 ficient enough in remuneration to justify interference." (6) 
 In Morgan's Patent, (c) Lord Brougham said : " Their Lord- 
 ships do not consider that this invention is entirely with- 
 out meritj but it seems of a very moderate degreCj being a 
 substitution of the chemical process of washing with sul- 
 phuric acid for the scaling process by fire^ making a 
 cheaper and somewhat better article. It is not without 
 merit ; at the same time^ it cannot be said to be of very 
 great merit — merit which would lead their Lordships to 
 strain much in favour of the inventor." [d) 
 
 The grounds upon which the Court proceeds in esti- 
 mating the merit of the inventor were thus laid down in 
 Bill's Patent {e) by Sir J. T. Coleridge: "It may be 
 collected from what has been already said^ that in deter- 
 mining whether to recommend the prolongation of a 
 patent or not, even where the claim to a first discovery 
 and the beneficial nature of that discovery are both con- 
 
 (a) Norton's Patent, 1 Moo. Webs. P. E. 19; WTiitehouse's 
 P. C. C. (N. S.) 347 ; Claridge's Patent, 1 Webs. P. K. 477 ; 
 Patent, 7 Moo. P. C. C. 394. Dovmton's Patent, ib. 567 ; Har- 
 
 (b) Per Lord Brotigham in dy's Patent, 6 Moo. P. C. C. 441 ; 
 Soames' Patent, 1 Webs. P. R. Markwick's Patent, 13 Moo. P. 
 734. C. C. 313. 
 
 (c) 1 Webs. P. K. 739. (e) 1 Moo. P. C. C (N. S.) 
 
 (d) And see Woodcroffs Pa- 264. 
 tent, 3 Moo. P. C. C. 171; 2 
 
196 EXTENSION OF THE TERM 
 
 Chap. VIII. ceded, 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 monopoly 
 limited to a certain time is properly the reward which the 
 law assigns to the patentee for the invention and disclo- 
 sure 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 post- 
 poned, is to depend on the exercise of a discretion, judi- 
 cial indeed, yet to be influenced by every such circum- 
 stance as would properly weigh on a sensible and consi- 
 derate 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 labours, 
 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." (a) 
 
 (a) And see Johnson's Patent, tent, ib. 96 ; Blake's Patent, ib. 
 L. R. 4 P, C, 85 ; Winan's Pa- 536. 
 
OF LBTTBES PATENT. 197 
 
 In Betts' Patent {aj a distinction -was drawn between Chap. vlil. 
 the merit of ingenuity and the merit of utility. The jyj ..^ „. 
 petitioner's patent was for making a new material by genuityand 
 
 . , '' merit of utility. 
 
 compressing lead and tin. Many years previously a 
 patent for a similar manufacture had been taken out by 
 one Dobbs, but had never been practically used. Lord 
 Chelmsfordj in recommending an extension of the term, 
 said, " Dobbs' specification 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 trials gave it a practical 
 application, is the real benefactor to the pubHc, and is 
 entitled to claim that description of merit which consti- 
 tutes one of the grounds for extending the termof a patent." 
 
 An invention may be of very considerable merit. No objection 
 though the amount of advance in improvement is small, proTement 
 and therefore the smallness of the step is not an ob- 
 jection. (6) 
 
 Simplicity, far from detracting from the merit of an Nor because of 
 invention, greatly increases its value, (c) ^ '" ^' 
 
 It is no objection that the original invention has been Nor that 
 improved upon, if the invention has merit and the tion has been 
 patentee has not been remunerated ; (d) but it is rather ^anwhile. 
 an argument in its favour, (e) Nor that the patent Nor that im- 
 
 proTements are 
 on expired im- 
 
 (a) 1 Moo. P. C. C. (N. S.) P. R. 119; Newton's Patent, 14 ^"'^ ^**™'" 
 
 49. Moo. P. 0. C. 159. 
 
 (&) Soames' Patent, 1 Webs. (rf) Galloway's Patent, 1 
 
 P. K. 735; Derosne's Patent, 4 Weba. P. R. 727; Bodmer's 
 
 Moo. P. C. C. 416 ; Woodcroffs Patent, 8 Moo. P. C. C. 284. 
 
 Patent, 2 Webs. P. R. 32. (e) Soames' Patent, 1 Webs. 
 
 (c) Muntz's Patent, 2 Webs. P. K. 735. 
 
198 
 
 EXTENSION OF THE TERM 
 
 Chap. VIII. 
 
 Nor that mode 
 of manufacture 
 altered. 
 
 Some invention 
 requii'ed. 
 
 Merit of im- 
 porter. 
 
 Circumstances 
 considered 
 where merit. 
 
 sought to be extended consists of improvements upon 
 an expired imported patent, (a) 
 
 An alteration in the mode of manufacture will not 
 prevent extension from being granted^ if it does not 
 materially detract from the merit of the original in- 
 vention. (6) 
 
 Some invention must be shown by the patentee, (c) 
 In endeavouring to show want of invention, reference to 
 a suggestion previously published, of the principle upon 
 which the patent is based, is immaterial, unless it is shown 
 that it is such a suggestion as any one could easily make 
 use of.{d) 
 
 The merit of an importer is of course much less than 
 that of an original inventor, and it is an argument against 
 a patent that it was imported and not invented. The 
 amount of merit is not actually taken away, but it is 
 lessened, (e) 
 
 The labour, care and science bestowed on an inven- 
 tion, (/) the fact that the nature of the invention is such 
 that it would not be likely to come into immediate use, {g) 
 that the patentee has not been benefited either owing to 
 the nature of the opposition to the patent,(/i) or in con- 
 sequence of his misfortunes and of those connected with 
 
 (a) BomlVs Patent, 1 Moo. 
 P. C. C. (N. S.) 348. 
 
 (6) Heath's Patent, 8 Moo. 
 P. C. C. 223. 
 
 (c) Derosne's Patent, 2 Webs. 
 P. E. 4. 
 
 (d) Woodcraft's Patent, 2 
 Webs. P. R. 23. 
 
 (e) Soames' Patent, 1 Webs. 
 P. R. 733 ; Woodcroft's Patent, 
 ib. 740. 
 
 (/) Swaine's Patent, 1 Webs. 
 P. R. 560 ; HilVs Patent, 1 Moo. 
 P. C. C. (N. S.) 265. 
 
 (g-) Wright's Patent, 1 Webs. 
 P. R. 576 ; Kollman's Patent, 
 ib. 565. 
 
 {h) Roberts' Patent, 1 Webs. 
 P. R. 573; Russell's Patent, 2 
 Moo. P. C. C. 496 I S. C. nam. 
 Whitehouse's Patent, 1 Webs. P. 
 R. 477. 
 
OF LETTERS PATENT. 199 
 
 him as agents or otherwise in the management of the Chap. Vlll. 
 patent, (a) will be considered where the merit of the 
 patent is established. 
 
 As one of the grounds upon which a patent is granted Utility of the 
 
 , . -71 Till inyention. 
 
 to an inventor is, that he may be rewarded by the mono- 
 poly on account of the ultimate benefit to be reaped by 
 the public from the utility of the invention ; it is clear 
 that if the invention turns out to be useless and the 
 public are not benefited, the claim of the inventor to 
 extension is gone. A strong case of hardship as well as 
 a strong case upon the utility of the invention must be 
 made out. (&) 
 
 It must be shown that the invention is of such a Public benefit 
 
 must be 
 
 character that the public will be benefited by it after proved, 
 the original term has expired ;(c) and the term will be 
 extended in such a case even though there is little novelty 
 in the invention. ((?) 
 
 The extent of the benefit conferred must vary in each Extent of 
 
 / \ T-i • i T benefit. 
 
 case with the circumstances, (e) Extension was granted 
 where it appeared that the invention, which introduced a 
 new material for the manufacture of paper, would, if 
 adopted by the trade, be a great public benefit as a 
 valuable addition to the number of raw materials in a 
 trade in which raw materials are very scarce and dear. (/) 
 
 If the invention is of such a nature that it will be to If detriment to 
 
 the public, no 
 (a) SouthwortKs Patent, 1 {d) Derome's Patent, 2 Wehs. 
 
 Webs. P. R. 487 ; Wright's Pa- P. R. 4. 
 
 tent, lb. 576. («) HiWs Patent, 1 Moo. P. 
 
 (i) Erard's Patent, 1 Webs. C. C. (N. S.) 265 ; Johnson's 
 
 P. R. 559. Patent, L. R. 4 P. C. 79. 
 
 (c) Simister's Patent, 4 Moo. (/) Houghtoris Patent, L. R. 
 
 P. C. C. 166 ; Hardy's Patent, 6 3 P. C. 461. 
 
 Moo. P. C. C. 443 ; Petitt Smith's 
 
 Patent, 7 Moo. P. C. C. 138. 
 
200 
 
 EXTENSION OF THE TERM 
 
 Chap. VIII. 
 
 Nor if specifi- 
 cation too 
 general. 
 
 Delay in uaing 
 the myention 
 is eridence of 
 inutility. 
 
 the detriment of the public that the monopoly should be 
 continuedj extension will be refused. Thus, where the 
 invention was generally for deodorizing and disinfecting 
 sewage and other offensive matters, by means of a com- 
 pound of sulphurous acid and carbolic acid, both of which 
 are well known disinfectants, and had been used for dis- 
 infecting purposes before the date of the patent, exten- 
 sion was refused on the ground that the restriction by 
 patent from general use, of the combination of the articles 
 referred to in the mode described in the specification 
 wouldbe a great public detriment. (a) 
 
 Where the specification described the invention to 
 consist in the application of a metallic soap to the bot- 
 toms of ships to prevent their fouling, and it appeared 
 that the soap was composed of well known substances 
 in common use; extension was refused on the ground 
 that as the individual substance for the application of 
 which the patent was sought to be prolonged was not 
 specifically defined, every kind of metallic soap being 
 within the limits of the specification, many questions 
 affecting the patent might be raised if any metallic soap 
 was used by the public in ignorance of the extensive 
 nature of the specification. (&) 
 
 The petitioner must have done all in his power to 
 bring the invention into notice and use ; (c) for the fact 
 that an invention when known, has never been generally 
 used, raises a strong presumption against its utiUty, {d) 
 
 (a) MeDougaVs Patent, L. R. 
 2 P. C. 1. 
 
 (S) Mclnnei Patent, L. R. 2 
 P. C. 54. 
 
 (c) HilFs Patent, 1 Moo. P. 
 C. 0. (ST. S.) 265 ; MarhwicKs 
 Patent, 13 Moo. P. C. C. 313. 
 
 {d) Wright's Patent, 1 Webs. 
 P. R. 576 ; Simister's Patent, ib. 
 723 ; Pinlius' Patent, 12 Jur. 
 233 ; Herberts Patent, L. R. 1 
 P. C. 399; Allan's Patent, ib. 
 507. 
 
OF LETTERS PATENT. 201 
 
 though it is not conclusive, (a) Delay in using the Chap. VIII. 
 invention may be explained in some circumstances from May be ex- 
 want of funds to prosecute it, as the pecuniary difficulties, pi*"»«<l . 
 
 r . ' 1 J ' Dypecuniary 
 
 in which the patentee has been involved in working out difficulties of 
 
 . . 111-. • patentee. 
 
 his invention, may have placed him m a situation which has 
 
 made it extremely difficult for him to obtain the means 
 
 for taking the necessary steps to put the patent into 
 
 operation. But where the petitioner was a gentleman 
 
 possessed of ample means to put his invention into 
 
 operation, and he had taken no effectual steps for this 
 
 purpose for ten years, extension was refused .■(&) In By partnership 
 
 this case the non-user was further explained by the 
 
 disputes between the patentee and his partners. In 
 
 another case, however, where partnership disputes were 
 
 given as a reason for want of success, combined with 
 
 want of capital, and the impossibility of getting other 
 
 partners on account of the disputes, extension was 
 
 refused on the ground that the partnership was the 
 
 petitioner's own act. (c) 
 
 Non-user may also be explained by the circumstance By nature of 
 
 , „ ,, . ,. . 1 ,1 i -i IT the invention. 
 
 that the nature ot the invention is such that it would 
 not be likely to come into immediate use. (cZ), In 
 Herbert's Patent, (e) the patent was for improvements 
 in constructing and mooring light vessels, buoys and 
 other similar floating bodies. The merit and utility of 
 
 (a) Woodcroffs Patent, 2 (c) Patterson's Patent, 6 MoO. 
 
 Webs. P. K. 29 ; BakeweUs P. C. C. 469. 
 Patent, 15 Moo. P. C. C. 386 ; (d) Southworth's Patent, 1 
 
 Herbert's Patent, L. R. 1 P. C. Webs. P. E. 487 ; Jones' Patent, 
 
 399. ib. 579 ; Woodcroft's Patent, 2 
 
 (i) Norton's Patent, 1 Moo. Webs. P. R. 32. 
 P. C. C. (N. S.) 339 ; Wright's (e) L. E. 1 P. C. 399. 
 
 Patent, 1 Webs. P. R. 576. 
 
202 
 
 EXTENSION OF THE TEEM 
 
 Chap. VIII. 
 
 Sufficiency of 
 remuneration 
 principal ques- 
 tion. 
 
 The merit and 
 utility being 
 proTed. 
 
 Reason for 
 non-remunera- 
 tion must be 
 given. 
 
 the invention were not denied. It was shown that the 
 market was very limited, and that there was great 
 difficulty in getting the invention tried, and on these 
 grounds extension was granted, (a) If the patent has 
 not been used at all during the whole term, that of 
 itself, unless rebutted by the strongest and most distinct 
 evidence, will as a rule be sufficient ground for refusing 
 extension, (6) even though the patent is of such a kind 
 as to require a company to provide sufficient capital, (c) 
 
 The fact that the patented article is much more 
 expensive than an article for a similar purpose in actual 
 use, and yet that a number of the patented articles have 
 been sold is strong evidence of utility. ((?) 
 
 The principal question in considering whether exten- 
 sion shall be granted or not, always is, has the individual 
 patentee under all the circumstances received what in 
 equity and good conscience may be considered a sufficient 
 remuneration ? (e) 
 
 It is of course necessary to consider the merit and 
 utility of the invention, (/) for if the patent is wanting 
 in these essentials, extension will be refused, even 
 though there has been a loss, (gi) 
 
 It must be shown that the patentee has used all 
 reasonable means to make the invention productive ; but 
 
 (a) And see Berringion's Pa- 
 tent, cited in Coryton's Law of 
 Patents, 225. 
 
 (b) BakewelVs Patent, 15 Moo. 
 P. 0. C. 386 ; Allan's Patent, 
 L. K. 1 P. C. 507. 
 
 (c) lb. 
 
 (d) Downton's Patent, 1 Webs. 
 P. R. 566. 
 
 (e) Hill's Patent, 1 Moo. P. 
 
 C. C. (N. S.) 264 ; Norton's Pa- 
 tent, ib. 343 ; Pinhu's Patent, 12 
 Jur. 234; McDougaTs Patent, 
 L. E. 2 P. C. 1 ; Downton's Pa- 
 tent, I Webs. P. R. 567. 
 
 (/) Morgan's Patent, 1 Webs. 
 P. R. 738. 
 
 (^■) Simister's Patent, 1 Webs. 
 P. R. 724; Betts' Patent, 10 
 Jur. 363. 
 
OF LETTERS PATENT. 203 
 
 that nevertheless the remuneration obtained has either Chap. VIII. 
 entirely failed or has been quite disproportionate to the 
 merits and to the benefit conferred upon the public, (a) 
 
 Thus extension was granted where it appeared from 
 the nature of the invention ; a patent for iron wheels for 
 carriages; that it was hardly possible that within the 
 ordinary period of time remuneration could be expected, 
 and that not only was there no remuneration, but a 
 heavy loss had been sustained.(&) So where the loss in 
 working a patent in Southern Australia was owing to 
 want of labour caused by the discovery of the gold 
 fields, (c) and where the invention was expensive, and 
 there had been no remuneration tiU the end of the 
 term, (d) But there must be a reasonable prospect of 
 success during the extended term, (e) 
 
 Where the benefit derived from the patent by the Benefit to put- 
 
 T . T , lie great, ex- 
 
 pubKc is proportionately greater than that derived by tension 
 the inventor, the term will be extended, even though °"^ ^^° 
 large profits have been made. (/) 
 
 Profits made by the patent abroad wiU be considered Profits from 
 in estimating the amount of remuneration. (</) In Poole's consfder^d.™ 
 Patent,(h) the foreign profits were not taken into ac- 
 count, but their Lordships in Johnson's Patent [i) desired 
 
 (a) HonibaU's Patent, 9 Moo. (e) Wooderoft's Patent, 2 
 P. C. C. 393 ; MarkwicKs Pa- Webs. P. K. 33. 
 
 tent, 13 Moo. P. C. C. 393. (/) Berosne''sPatent,2We\>s. 
 
 (b) Jones' Patent, 1 Webs. P. P. K. 4 ; Hardy's Patent, 6 Moo. 
 E. 579 ; Southworth's Patent, ib. P. C. C. 443. 
 
 487 ; Stafford's Patent, ib. 563 ; (g) Johnson's Patent, L. E. 4 
 
 Kollman's Patent, ib. 564. P. 0. 82. 
 
 (c) Napier's Patent, 13 Moo. Qi) Poole's Patent, L. E. 1 
 P. C. C. 545. P. C. 514. 
 
 {d) Newton's Patent, 14 Moo. (0 L. R. 4 P. C. 82. 
 P. C. C. 156. 
 
204 
 
 EXTENSION OF THE TEEM 
 
 Chap. VIII. 
 
 Position of 
 
 Importers. 
 
 Patent must 
 be taken as a 
 whole. 
 
 Act of Parlia- 
 ment obliging 
 use of patent 
 not objection. 
 
 it to be understood that that case was not to be con- 
 sidered as laying down any general rule of law, and that 
 they were of opinion that in taking into consideration 
 the remuneration received, they 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. 
 
 Assignees are not on the same footing as the patentee, 
 and where it appeared that the patentee had been 
 remunerated though the assignees had not, and the 
 invention was imported and well known abroad, exten- 
 sion was refused, (a) So too where the petitioner had 
 purchased the letters patent and stock-in-trade of the 
 patentee at a fair value, and had not sustained any 
 loss. (&) 
 
 Where the patentees were importers of the invention 
 and had incurred loss in their endeavours to introduce it 
 into this country, extension was granted, (c) 
 
 Where the patent consists of several branches, it must 
 nevertheless be taken as a whole, and the Court will not 
 allow it to be divided and subdivided to see whether 
 there has been a gain under some branches, and a loss 
 under others, [d) and semble, that if there has been con- 
 siderable profit under one branch, that 'Would be a 
 ground for refusing extension, even though there has 
 been loss under the others, (e) 
 
 It is no objection to extension that by an Act of Par- 
 liament the public wiU be obliged to use the patentee's in- 
 
 (a) Claridge's Patent, 7 Moo. (c) Berry's Patent, 7 Moo. P. 
 
 • P. C. C. 394. C. C. 187. 
 
 (J) QuarrilVs Patent, 1 Webs. {d) Perkins' Patent, 2 Webs. 
 
 P. R. 740. P. K. 7. 
 
 (e) lb. 
 
OF LETTERS PATENT. 205 
 
 vention, if it can be proved that at the time of making Chap. vill. 
 the application he has not received sufficient remunera- 
 tion. (a) 
 
 The application must not be made until shortly before When appUca- 
 the expiration of the term of the original patent, as the made° '"' 
 profits made during the last portion of the term may 
 materially affect the question of extension. (6) 
 
 The most unreserved and clear statement of the ac- The accounts 
 counts of the profits made by the patent is necessary ; (c) ™"^* ^^ ''^^^' 
 for the extension of the term of a patent being a matter 
 of favour and not of right, it is essential to the favourable 
 consideration of an application for extension that the 
 patentee should distinctly prove how much the public 
 have had to pay, that is to say, how much has been re- 
 ceived by him on account of his patent ; and if he has so 
 acted as to be unable to give such proof when he applies 
 for extension, his application must fail, (d) 
 
 In Saxby's Patent (e) Lord Cairns said that it is " the 
 duty of every patentee who comes for the prolongation 
 of his patent to take upon himself the onus of satisfying 
 this committee in a manner which admits of no contro- 
 versy, of what has been the amouijt of remuneration 
 which, in every point of view, the invention has brought 
 to him, in order that their lordships may be able to come 
 to a conclusion whether that remuneration may fairly be 
 considered a sufficient reward for his invention or not. 
 It is not for this committee to send back the accounts 
 for further particulars, nor to dissect the accounts for the 
 
 (a) Foade's Patent, 9 Moo. P. (c) HilVs Patent, 1 Moo. P. 
 
 C. C. 376. C. C. (N. S.) 271. 
 
 (6) Macintosh's Patent, 1 (rf) Trotmaris Patent, L. K. 1 
 
 Webs. P. E. 739. P. C. 124. 
 
 (e) L. K. 3 P. C. 294. 
 
206 EXTENSION OF THE TEEM 
 
 Chap. VIII. purpose of Surmising what might be the real outcome if 
 they were differently cast ; it is for the applicant to bring 
 his accounts before the committee in a shape which will 
 leave no doubt as to what the remuneration has been that 
 he has received.^' (a) 
 
 It was suggested in PerMns' Patent (b) that where the 
 accounts were not clear^ they should be handed to the 
 Solicitor to the Treasury to examiae. 
 What accounts The actual expenses must be shown, it is not sufficient 
 
 must contain. ,,,,■,,,■, , , ■,^ „, , , \ -^ 
 
 to state that there has been neither profit nor loss, (c) It 
 is material to know in what ratio profits have increased if 
 they have increased from year to year, (d) Profits arising 
 from the sale of the patented article for exportation must 
 be included, (e) 
 Deductions In calculating whether any profit has been obtained 
 
 aEowed to be . . 
 
 made in calcu- through or by means of a patent, it is correct to deduct 
 in the first place, beyond the cost price, a fair manu- 
 
 Manufacturer's facturer's profit on the articles sold, and the mere prefer- 
 ence of the market obtained by the manufacturer is not 
 to be deemed a profit derived from the patent. (/) Where 
 the patentee deducted two-thirds as profits from the 
 manufacture and sale, and only credited the patent with 
 one-third, the deduction was held to be unreasonable, (g) 
 Lord Brougham in Munt^s Patent (h) said: " We cannot 
 weigh in golden scales the proportions between manu- 
 
 (a) And see Clark's Patent, (e) Hardy's Patent, 6 Moo. 
 
 L. R. 3 P. C. 425. P. C. C. 441. 
 
 (6) 2 Webs. P. R. 14. (/) Galloway's Patent, 7 Jur. 
 
 (c) QuarrilVs Patent, iWebs. 453; Betts' Patent, 1 Moo. P. C. 
 P. R. 740. C. (N. 8.) 49. 
 
 (d) Perkins' Patent, 2 Webs. {g) HilTs Patent, 1 Moo. P. 
 P. R. 17. C. C. (N. S.) 269. 
 
 (h) 2 Webs. P. R. 120. 
 
OF LETTERS PATENT. 207 
 
 facturers' profits and patentees', but we must take it in Chap. Vlll. 
 tlie gross ; and applying our minds as men of the world, 
 men of business, neither unfairly towards the inventor nor 
 extravagantly and romantically towards him in his favour, 
 neither against him pressing nor in his favour straining, 
 we must ascertain whether he has in the eyes of men of 
 ordinary but enlightened understandings, judging fairly 
 between him and the public, had a sufficient remuneration." 
 
 Expenses caused by litigation in protecting the patent Loss by litagi- 
 may be deducted, (a) But where the patentee com- 
 promised suits and gave up costs to which he had no 
 apparent title, a deduction was not allowed. (6) 
 
 The patentee may in his accounts charge for loss of Loss of time, 
 time in endeavouring to bring the patent into notice, (e) 
 Deductions will also be allowed on account of the costs of Experiments, 
 experiments . (d) 
 
 In Perkins' Patentee) the following accounts were 
 allowed : — 
 
 Amount of yearly sales of patent apparatus . 64,920 
 
 Materials, labour, tools, and expenses belonging 
 
 to the sales 47,282 
 
 Bad debts 2,296 
 
 (a) Betts' Patent, 1 Moo. P. Patent, L. K. 2 P. C. 54 ; Clark's 
 C. C. (N. S.) 49 ; Roberts' Pa- Patent, L. E. 4 P. C. 542. In 
 tent, 1 Webs. P. R. 573 ; Kay's the three last of the above cases 
 Patent, 1 Webs. P. K. 572. the sum of £400 a year was 
 
 (b) Hill's Patent, 1 Moo. P. allowed to be charged. 
 
 C. C. (N. S.) 268. (d) Kay's Patent, 1 Webs. P. 
 
 (c) Newton's Patent, 14 Moo. K. 572 ; Perkins' Patent, 2 Webs. 
 P. C. C. 156 ; Mallet's Patent, P. K. 17. 
 
 L. R. 1 P. C. 311 ; Perkins' Pa- (e) 2 Webs. P. E. 17. 
 
 tent, 2 Webs. P. E. 17 ; Mclnnes' 
 
208 EXTENSION OF THE TEEM 
 
 Chap. VIII. Law oosts . . . . • • 166 
 
 Leaving 15^176 
 as the amount of profit^ subject to the follow- 
 ing deductions : 
 
 Cost of materials, labour in experiments, and 
 
 patents ...... 600 
 
 Interest at £5 per cent, on the average amount 
 
 of capital for twelve years at £225 a-year . 2,700 
 
 Personal attendance of patentee for thirteen and 
 
 a-half years at £400 a year . . . 5,400 
 
 Total £8,600 
 
 Leaving £6,576 as net profit from the patent 
 business, subject to be reduced should any 
 unpaid debt prove bad. 
 
 Royalties paid Where a patentee employs an agent to bring the 
 
 to 3i6*6Ilt 
 
 patent forward and pays him by the royalties, the amount 
 
 so paid may be deducted, (a) 
 Patentee also Where the patentee is also a manufacturer he ought to 
 
 must keep keep a patent account distinct and separate from any 
 
 separate patent ni. 'I'li i ji -i 
 
 accounts: other business m which he may happen to be engaged, 
 
 so as to be able to give the clearest evidence of every- 
 thing which has been paid on account of the patent. (6) 
 In Saxby's Patent (^c) Lord Cairns said : " Where a patentee 
 is also the manufacturer, the profits which he makes as 
 manufacturer, although they may not be in a strict point 
 of view profits of the patent, must undoubtedly be taken 
 
 (a) Poole's Patent, L. R. 1 (N. S.) 61 ; Mclnnes' Patent, 
 
 P. C. 514 ; Perkins' Patent, 2 L. R. 2 P. C. 54. 
 Webs. P. R. 16. (c) L. R. 3 P. C. 295. 
 
 (&) BetW Patent, 1 Moo. P. C. 
 
OF LETTERS PATENT. 209 
 
 into consideration upon a question of this kind. It is Chap. vill. 
 
 obvious that in di£Ferent manufactures there will be 
 
 different degrees of connection between the business of 
 
 the applicant as a manufacturer and his business or his 
 
 position as the owner of a patent. There may be patents 
 
 of some kind which have little or no connection with the 
 
 business of the manufacturcj and there may be patents of 
 
 a different kind where there is an intimate connection 
 
 with the business of the manufacturer ; that the possession 
 
 of the patent virtually secures to the patentee his power 
 
 of commanding orders as a manufacturer." (a) 
 
 The distinction between the profits made as a patentee Distinction be- 
 and as a manufacturer was thus commented upon by of patentee 
 Lord Brougham in Muntz's Patent : (b) " There are two manufacturer, 
 cases in which a patentee may come before us^ and one 
 is where^ as in the case of the late Mr. Howard for the 
 sugar refinery, the party is a mere chemist, and has made 
 an invention of the most useful and meritorious process 
 to be used by sugar bakers ; there no confusion can ever 
 arise between gains of patentee quasi inventor and his 
 gains quasi manufacturer. The other case is the case of 
 Mr. Watt, who came before Parliament for the extension 
 of his patent, and obtained an Act, he having been out 
 of pocket by the invention, and having been aU his life 
 in law and equity in consequence of the disputes with 
 others — with pirates of his great and immortal discovery. 
 He there combined in his own person the inventor and 
 manufacturer, Mr. Watt never denying that he was to set 
 down to the account of his patent, of the benefit that he 
 had reaped from his patent, the preference that was given 
 him in the market as a manufacturer. He would not 
 
 (a) And see Johnson's Patent, (6) 2 Webs. P. R. 121. 
 
 L. R. 4 P. C. 82. 
 
210 EXTENSION OF THE TERM 
 
 Chap. VIII. tave been able to have carried on his trade to anything 
 
 like that extent had it not been for that patent. It is 
 
 impossible to sever the two heads of profit one from the 
 other. Mr. Muntz has gained quasi patentee, and even 
 though he obtained and reaped the fruit and, as it were, 
 arrived at the fruits of his ingenuity as an inventor, 
 through his labour and the use of his capital and industry 
 as a manufacturer, it is no answer to say that of these 
 things the one can be deducted from the other. You 
 may make out a very lucrative patent to be of no gain at 
 all to the patentee although agreeing that the patent was 
 lucrative and had been a gain. It is really a monopoly 
 preference which he has ; because as patentee he is 
 enabled to sell and to trade in a manner which, but for 
 his invention and but for his patent, he could not." 
 Royalties from The rules laid down above as to perfect openness in 
 
 1 1 p pyl Q p p Q 
 
 stating the accounts, apply as well to a case where the 
 applicant has not manufactured his patented article, but 
 has received his remuneration by royalties received from 
 licensees, as to where he is his own manufacturer, and in 
 such a case he must prove the amount of the profits 
 made by the licensees in respect of the patented article. (») 
 Course of pro- If the statement of accounts is prima facie satisfactory, 
 
 cedure where . . . 
 
 accounts priiDEi tne petitioner may prove the merits of the invention 
 tory. ^* '^ *" before entering upon the question of the accounts. (&) But 
 if it is unsatisfactory the petition will be dealt with 
 without reference to the merits, (c) These cases, how- 
 ever, only go to this extent ; that where there are special 
 statements which show upon the face of the accounts that 
 
 (a) TrotmatCs Patent, L. K. (c) Saxhy's Patent, L. K. 3 
 
 1 P- 0. 118. P. C. 292 ; Clark's Patent, ibid. 
 
 (6) Houghton's Patent, L. R. 421. 
 3 P. C. 461. 
 
OF LETTERS PATENT. 211 
 
 the petitioner has in fact made very large profits by his Chap. VIII. 
 invention, such circumstance is sufficient for the Court at 
 once to determine the application without going into the 
 merits of the invention, (a) 
 
 The accounts must be strictly proved. (6) Where, ETidenceto 
 
 . prove ac- 
 
 however, the accounts were unsatisfactory, owing to the counts, 
 loss of the account books, during the petitioner's bank- 
 ruptcy, extension was granted on a proper account of the 
 profits and losses of the patent verified by affidavit being 
 sent to the Attorney General, with a satisfactory explana- 
 tion, accounting for the non-production of the books, (c) 
 In another case the accounts were taken on the petitioner's 
 own evidence, {d) And where it appeared that the estate 
 of a deceased patentee was of little value, and that no 
 accounts had ever been kept, the petitioner, the adminis- 
 tratrix of the patentee, on an allegation in the petition 
 that not only had there been no profits but considerable 
 loss, was examined to prove that fact, (e) 
 
 The Judicial Committee has power to impose terms on Terms imposed 
 ... in , • . 11106113,111 cases, 
 
 the patentee or his assignees beiore granting extension. 
 
 This will be done where it is for the benefit of the public 
 
 that the government should use the invention. Thus 
 
 extension was granted in Petitt Smith's Patent (/) , subject 
 
 to a proviso that the Admiralty should be at liberty to 
 
 manufacture and fit the invention without any license 
 
 from the patentee. 
 
 (a) Hovghton's Patent, L. K. (d) Hutcliison\ Patent, 14 
 
 3 P. C. 461 ; WieU's Patent, L. Moo. P. C. C. 364. 
 
 K. 4 P. C. 90. (e) HeatKs Patent, 8 Moo. P. 
 
 (6) Perkins' Patent, 2 Webs. C. C. 217. 
 
 P. R. IS. (/) r Moo. P. C. C. 139. 
 
 (c) Markwiek's Patent, 13 
 Moo. P. C. C.310. 
 
212 
 
 EXTENSION OF THE TERM 
 
 Chap. VIII. Such a proviso will not, however, be required if the 
 patentee has not received sufficient remuneration, (a) 
 An application for the extension of a patent for an im- 
 proved method of printing in colours was opposed by 
 the apprentices of the patentee, on the ground that 
 they had expected to be able to exercise the trade 
 themselves on the expiration of the patent, and that they 
 would not be able to get employment. It appeared 
 however that they had been so instructed as to be able to 
 get employment in another branch of the trade, and no 
 condition was imposed. {&) 
 Partners. If there has been a partnership between the patentee 
 
 and other parties the Court will on extension require the 
 patentee to give the partners the same rights and privi- 
 leges as they were entitled to under the deed affecting 
 the original letters patent, no further powers will be 
 given than those contained in the deed of partnership, 
 especially if the partners refuse to concur in the applica- 
 tion, (c) 
 Licensees. Where a patentee did not manufacture the article for 
 which he had taken out a patent but had granted a license 
 to a particular firm to manufacture it, and it appeared 
 that there was an agreement that the license should be 
 exclusive, extension was granted on condition that licenses 
 should be granted to any persons who should be desirous 
 of having them upon the same terms as the original 
 license, (d) 
 I. In the case of a petition by an assignee, the condition 
 
 (a) Lancaster's Patent, 2 Moo. 
 P. C. C. (N. S.) 189 ; Carpenters 
 Patent, ib. 191. 
 
 (J) Baxter's Patent, 13 Jur, 
 593. 
 
 (c) Normandy's Patent, 9 Moo. 
 P. C. C. 452. 
 
 (d) Mallett's Patent, L. R. I 
 P. C. 308. 
 
OF LETTERS PATENT, 213 
 
 usually is that lie shall secure some remuneration to the Chap. Vlll. 
 patentee. This is generally in the form of an annuity 
 during the extended term, [a) 
 
 Where a moiety of a patent had been assigned and a 
 petition for extension was presented by the patentee 
 together with the assignees^ but before the hearing the 
 patentee died having by his will appointed his widow 
 executrix and residuary legatee^ extension was granted 
 to the asignees on condition that they held the moiety 
 of the patent in trust for the widow. (&) 
 
 TermSj howcTer, will not be imposed upon the assignees 
 when they have lost heavily by the patent, (c) 
 
 The interests of the public wiU be considered in grant- 
 ing extension to assignees. Thus in Hardy's Patent, {d) 
 besides requiring the assignees to pay an annuity to the 
 patentee, a further condition was imposed that neither the 
 assignees nor their assigns should charge for articles made 
 according to the invention, any sum or sums of money, 
 greater than after the rate of the sums thereinafter 
 mentioned, over and above the price of bar iron per ton 
 as fixed by the Staffordshire ironmasters at the quarterly 
 meeting next preceding the date of any contract of sale. 
 
 The applicant for prolongation must advertise in the Modeofpro- 
 " London Gazette" three times, and in three London oFappfiration^ 
 papers, and three times in some country paper published fo„*ationTf 
 in the town where, or near to which, he carries on any *'^tg^™°^* 
 manufacture of anything made according to his specifica- 
 
 (a) Whitehouse's Patent, 1 (b) Herbert's Patent, L. E. 
 
 Webs. P. R. 477 ; S. C. nom. 1 P. C. 399. 
 RusselVs Patent, 2 Moo. P. C. C. (c) Bodmer's Patent, 6 Moo. 
 
 496 ; MarhwicKs Patent, 13 Moo. P. C. 0. 468. 
 P. C. C. 312 ; Hardy's Patent, (d) 6 Moo. P. C. C. 445. 
 
 6 Moo. P. C. C. 445. 
 
214 EXTENSION OF THE TEEM 
 
 Chap. VIII. tion, OP near to or in -whicli 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 apply to Her Majesty in Council 
 for a prolongation of his term of sole using and vending 
 his invention, and must petition Her Majesty in Council 
 to that effect, (a) 
 Advertise- The petitioner must in the advertisements 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 
 must 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." (&) These notices will be in- 
 cluded in one advertisement, (c) 
 
 Petitions must be presented within one week from the 
 insertion of the last of the advertisements, and must be 
 accompanied with afBdavits of advertisements having 
 been duly inserted, and the matters in such advertise- 
 ments may be disputed by the parties opposing upon the 
 hearing of the petition, {d) 
 
 Where the patentee resides abroad, and the manufac- 
 ture of the patented article is carried on under licenses, 
 the advertisements should be inserted in papers circu- 
 lating where the manufacture is actually carried on. (e) 
 
 Where the advertisements were inserted in London 
 papers only, a witness was allowed to be called to prove 
 
 (a) 5 & 6 Will. IV. c. 83, s. 4. Patent, ib. 564; WrigMs Patent, 
 
 (5) Rules of the Ptivy Coun- ih. 576. 
 cU, els. 2 — 4. ((f) Rules of the Privy CouU' 
 
 (c) Brard's Patent, 1 Webs. cil, 2 — 4. 
 P. R. 559, n. ; SouthwortKs (e) Derosne's Patent, 2 Webs, 
 
 Patent, ib. 486, n. ; Stafford's P. R. 2. 
 
OP LETTERS PATENT. 215 
 
 that the patent apparatus was manufactured in London, Chap. VIII. 
 and not elsewhere, (a) 
 
 To entitle an equitable assignee to appear with the 
 legal assignee of a patent, his name must appear in the 
 advertisements; and if it does not his counsel will not be 
 heard, (b) 
 
 The advertisements must be proved before the case is 
 heard, (c) 
 
 The applicant must lodge at the Privy Council office Documents to 
 six printed copies of the specification and also four copies Privy Council 
 of the balance sheet of expenditure and receipts, relating 
 . to the patent, which accounts are to be proved at the 
 hearing. If the specification has not been printed, and 
 if the expense of making six copies of any drawing would 
 be considerable, the lodging of two copies only of such 
 specification and drawing will be deemed sufficient. All 
 copies must be lodged not less than one week before the 
 day fixed for hearing the application, (d) 
 
 The Court will refuse to enter upon accounts if they Delay in filing 
 have not been filed as required, (e) 
 
 Where owing to the mistake of the petitioner's agent 
 the petition was not filed within the prescribed time, the 
 petition was allowed to be filed on a special application 
 being made. (/) 
 
 Everything relating to the title of the petitioner must The petition, 
 be fully and fairly stated in the petition, (g) Where the 
 
 (a) Perkins^ Patent, 2 Webs. (e) Johnson and Atkinson's 
 
 P. E. 8, n. Patent, L. R. 5 P. C. 87. 
 
 (S) Noble's Patent, 1 Moo. (f) Hutchison' s Patent,14Moo. 
 
 P. C. C. 191. P. C. C. 364. 
 
 (c) Perkins' Patent, 2 Webs. (g-) Hutchison's Patent, 14 
 P. R, 8. Moo. P. C. C. 364 ; Johnson's 
 
 (d) Rules of the Privy Coun- Patent, L. R. 4 P. C. 83. 
 oil, cl. 9. 
 
216 
 
 EXTENSION OF THE TERM 
 
 Amendment. 
 
 Caveats. 
 
 Chap. VIII, petitioner omitted to state that the patent was in fact a 
 comniunication from a foreigner living abroad, who had 
 previously taken out a patent for the same invention 
 in America, and that the American patent had ex- 
 pired but had been renewed, the application was 
 refused, (a) 
 
 Assignees must state their title strictly. (6) 
 
 Where material facts relating to the petitioner's title 
 were omitted, the hearing of the petition was adjourned 
 with leave to amend, (c) 
 
 Any person may enter a caveat at the council office, 
 and is entitled to be heard in opposition to the peti- 
 tion. (c^) The caveat must be entered before the day on 
 which the petitioner has advertised his intention of apply- 
 ing for a day to be fixed for the hearing. Any person en- 
 tering a caveat is entitled to four weeks' notice of the 
 time appointed for the hearing, to be served with a copy 
 of the petition, and no application to fix a time for hearing 
 may be made without affidavit of such service. All par- 
 ties served with petitions must 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, (e) 
 
 No person can be heard in opposition to an application 
 for extension unless he has entered a caveat. 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 
 
 (a) Pitman's Patent, L. K. 4 
 P. C. 84. 
 
 (6) Wright's Patent, 1 Webs. 
 P. R. 561 ; Galloway's Patent, 
 ib. 725. 
 
 (c) Hutchison's Pafent,14Moo. 
 P. C. C. 365. 
 
 ((f) 5&6Wm.IV. c. 83, S.4; 
 Lowe's Patent, 8 Moo. P. C. C. 1. 
 
 (e) Rules of the Privy Coun- 
 cil, els. 2, 5, 6. 
 
OF LETTERS PATENT. 217 
 
 on his own behalf, it was held that his counsel could only Chap. VIII. 
 be heard for him, and could only ask such questions as 
 respected his interest, (a) 
 
 Any person who has rights under the patent which the 
 patentee refuses to recognise on extension, may petition 
 that no extension may be granted unless the patentee 
 admits his rights, (b) 
 
 Any person entering a caveat is entitled to notice of 
 any objection which would prevent the patent from being 
 received, (c) 
 
 The Attorney- General appears on behalf of the public Opposition by 
 
 . . , - Attorney- 
 
 generally, and is entitled to oppose, although no caveat General. 
 has been entered, (d) In PeUtt Smith's Patent, (e) an 
 application by the Lords of the Admiralty to enter a 
 caveat and be heard against the petition, such caveat not 
 having been filed within the time required by the rules 
 was refused, on the ground that the Attorney-General 
 represented the interests of the Crown as well as those of 
 the public. 
 
 Unless parties opposing have distinct and separate Two counsel 
 
 only heard. 
 
 interests, not more than two counsel wiU be heard to 
 oppose. (/) 
 
 The Court will not on an application under 14 & 15 inspection of 
 
 accounts not 
 
 Vict. c. 99, s. 6, which gives the Courts of Common Law compelled, 
 power to compel inspection of documents on application 
 by either party, and to investigate all documents in the 
 custody or control of the other, and to take and examine 
 
 (a) Lowe's Patent, 8 Moo. P. {d) Petitt Smith's Patent, 1 
 Q.G.I. Moo. P. C. C. 133 ; Erard's 
 
 (b) Kormandy's Patent, 9 Moo. Patent, 1 Webs. P. R. 557 n. 
 P. C. C. 452. (e) 7 Moo. P. C. C. 133. 
 
 (c) Hutchison's Patent, 14 (/) Woodcraft' sPatent,iM.oo. 
 Moo. P. 0. C. 365. P. C. C. 172, 
 
218 EXTENSION OF THE TERM 
 
 Chap. VIII. copies of the same, compel a petitioner to allow the op- 
 ponents to inspect his accounts, {a) 
 
 ETidence. As the proceedings before the Judicial Committee are 
 
 in substitution for a Bill in Parliament, the Court follows 
 a similar course to that which would be followed by Par- 
 liament, and adopts rules of evidence as nearly as pos- 
 sible resembling the rules of evidence in courts of 
 law.(&) 
 
 Costs. Costs will not be given to the opposers where there 
 
 is no ground for opposition, (c) Where there was some 
 conflict of opinion on the part of scientific witnesses as 
 to the merits of the invention, costs were refused 
 although extension was granted, {d) 
 
 Costs will be given to all opposers, if the petition is 
 abandoned upon the hearing, (e) and it is not necessary 
 that the opposers should serve the petitioners with 
 notice of their intended application to the Court for 
 costs. (/) 
 
 Where the petition has been heard and is dismissed, 
 the opposers are generally given their costs, for if costs 
 were not given persons would be discouraged from 
 coming to protect the interests of the public, (gr) But 
 costs will not be given where the opposition has not 
 been properly conducted, as where the opposers caused 
 expense by relying on irrelevant evidence, and produced 
 
 (a) Bridsm's Patent, 7 Moo. Patent, 7 Moo. P. C. C. 499 ; 
 P. C. C. 500. Hornby's Patent, ib. 503 ; Mil- 
 
 (b) 1 Webs. P. E. 557. ner's Patent, 9 Moo. P. C. C. 39. 
 
 (c) Downton's Patent, 1 Webs. (/) Bridson's Patent, 7 Moo. 
 P. R. 567. P. C. C. 499. 
 
 (d) Galloway's Patent,lWehs. (g-) Westrupp and Gibbins' 
 P. R. 129. Patent, I Webs. P. R. 556 ; 
 
 (e) Mackintosh's Patent, 1 Wield's Patent, L. R. 4 P. C. C. 
 Webs. P. R. 739; Bridson's 92. 
 
OF LETTEES PATENT. 219 
 
 witnesses who were not credible, (a) Where there are Chap. vili. 
 several opposers who really represent the same kind of 
 opposition, a gross sum will be allowed for costs to be 
 apportioned between them, unless the petitioner prefers 
 within a certain time to tax the costs of all parties. (6) 
 
 Where patentees neglected to obtain new letters patent 
 in pursuance of an order in council and a petition was 
 presented to revoke the order and to recall the warrant 
 to seal, and it did not appear that the petitioner or the 
 public had suffered any loss by the laches of the patentee; 
 the Judicial Committee, though they did not consider the 
 delay sufficient to deprive the patentee of all benefit of 
 the renewed patent, made it a condition before dis- 
 missing the petition, that the patentees should pay the 
 petitioner £200 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 the dismissal of the petition, (c) 
 
 (a) HonibalVs Patent, 9 Moo. C. (N. S.) 271 ; Johnson's Pa- 
 P. C. C. 394. tent, L. R. 4 P. C. 79 ; WieWs 
 
 (b) Milner's Patent, 9 Moo. Patent, ih. 93. 
 
 P. C. C. 39 ; Jones' Patent, ih. (c) Re SMumberger, 9 Moo. 
 
 41 ; HilVs Patent, 1 Moo. P. C. P. C. C. 1. 
 
CHAPTER IX. 
 
 OP CONFIRMATION OF THE TERM OF LETTERS 
 PATENT. 
 
 Chap. IX. 
 
 Publication 
 unknown to 
 patentee. 
 
 5 & 6 Will. IV. 
 c. 83, s. 2. 
 Mode of pro- 
 ceeding where 
 the patentee is 
 not the real 
 inventor, 
 though he be- 
 lieved himself 
 to be so. 
 
 T T occasionally happens that there has been a previous 
 -^ publication of an invention for which letters patent 
 have been taken out^ and that such publication is un- 
 known to the patentee. The patent is nevertheless 
 void, as has already been seen, for want of novelty. In 
 many cases formerly the patentee suffered great hard- 
 ship by the operation of this rule. The majority of 
 patents are for improvements on some existing machine, 
 and it often happened that persons having the im- 
 provement of the same machine in view carried it out 
 by the same means. In order to provide a remedy for 
 this state of things, it was provided by the 6th & 6th 
 Will. IV. c. 83, s. 2, that "if in any suit or action it 
 shall be proved or specially found by the verdict of the 
 jury that any person who shall have obtained letters 
 patent for any invention or supposed invention was not 
 the first inventor thereof, or some part thereof, by reason 
 of some other person or persons having invented or use'd 
 the same or some part thereof before the date of such . 
 letters patent, or if sach patentee or his assignees shall 
 discover that some other person had, unknown to such 
 patentee, invented or used the same, or some part thereof 
 before the date of such letters patent, it shall and may 
 
CONi'IEMATION OF TEEM Off LETTERS PATENT. 221 
 
 be lawful for such patentee or his assigns to petition his Chap. ix. 
 Majesty in Council to confirm the said letters patent or 
 to grant new letters patent, the matter of which petition 
 shall be heard before the Judicial Committee of the privy 
 council ; and such committee upon examining the said 
 matter and being satisfied that such patentee believed 
 himself to be the first and original inventor^ and being 
 satisfied that such invention, or part thereof, had not 
 been publicly and generally used before the date of such 
 first letters patent, may report to his Majesty their 
 opinion that the prayer of such petition ought to be com- 
 plied with, whereupon his Majesty may, if he think fit, 
 grant such prayer ; and the said letters patent shall be 
 available in law and equity to give such petitioner the 
 sole right of using, making and vending such invention 
 as against all persons whatsoever, any law, usage or 
 custom to the contrary notwithstanding : Provided that 
 any person opposing such petition shall be entitled to be 
 heard before the said Judicial Committee : Provided also, 
 that any person, party to any former suit or action 
 touching such first letters patent shall be entitled to 
 have notice of such petition before presenting the same." 
 
 The intention of the statute is that the patentee may, intention of 
 if circumstances render it fitting in the judgment of the 
 Judicial Committee, be protected against any prior in- 
 vention not publicly or generally used, where he has no 
 reason to believe that such prior invention existed, and 
 it confers the power of giving to the patentee that which 
 •he did not possess before the passing of the statute, or 
 in other words, of curing that which before the statute 
 would have constituted an invalidity. If the patent 
 were valid by law as it existed before the passing of the 
 statute, it could hardly be necessary to confirm it. The 
 
222 
 
 CONFIEMATION OF THE TEEM 
 
 Chap. IX. 
 
 When applica- 
 tion to be 
 made. 
 
 Powers of the 
 Judicial Com- 
 mittee. 
 
 What patentee 
 must prove. 
 
 case to be remedied is not that of a patentee discovering 
 a prior invention^ so known that the patent might be 
 invalidated on that ground^ though not publicly and 
 generally used. The statute was framed to protect 
 against circumstances which constituted an invalidity, 
 though the patentee had so far as his knowledge went 
 every reason to believe himself to be the original in- 
 ventor, (a) 
 
 An application for confirmation should be made as 
 soon as possible after the patentee becomes aware that 
 there has been a previous publication. 
 
 The power of the Judicial Committee to confirm letters 
 patent is discretionary,(6) and wiU be very cautiously exer- 
 cisedj (c) as the effect of it is to supersede the ordinary 
 rules of law at the expense of the public in favour of an 
 individual, to give force and validity by a quasi legis- 
 lative authority to a grant of monopoly actually void ; and 
 to exclude from the use of the invention not only the pubHc 
 generally, but the first and original inventor, who has 
 actually brought it into public though not into general 
 use before the first patent was taken out. (d) 
 
 The patentee must prove to the satisfaction of the 
 Judicial Committee that he believed himself to be the 
 first and original inventor at the time that he took out 
 his patent, (e) and also that at th'kt time the patent was not 
 publicly and generally used. (/) 
 
 (a) Stead's Patent, 2 Webs. 
 P. R. 146. 
 
 (&) Westrupp and Oibbins' 
 Patent, 1 Webs. P. R. 555; 
 Stead's Patent, 2 Webs. P. R. 146. 
 
 (c) Card's Patent, 6 Moo. P. 
 C. C. 213. 
 
 (d) HonihalVs Patent, 9 Moo. 
 P. C. C. 378. 
 
 (e) Card's Patent, 6 Moo. P. 
 C. C. 213 ; HonihalVs Patent, 9 
 Moo. P. C. C. 378 ; Stead's Pa- 
 tent, 2 Webs. P. R. 146. 
 
 (/) HonihalVs Patent, 9 Moo. 
 
OF LETTERS PATENT. 223 
 
 In Heurteloup^s Patent (a) it was discovered that a Chap. IX. 
 patent had been granted in France to one L. de Valdahon, 
 for an invention^ part of which was similar to the petition- 
 er's invention, but it had never been known in England, 
 otherwise than by a description in a book published in 
 France, a copy of which was in the British Museum. 
 Notice of the day of hearing was directed to be given to 
 L. de Valdahon, and on an affidavit that such notice had 
 been sent through the Post Office, directed to Paris, con- 
 firmation was recommended. 
 
 A person who desires to have his patent confirmed An action for 
 ought not, before his petition is heard, to bring an action not sustainable 
 for infringement, as the two proceedings are contradictory: hmi"! ^* 
 the one admits the invahdity of the patent, the other seeks 
 relief because a valid patent is infringed. (6) 
 
 When it was proved that the invention for which the Invention 
 patent had been granted had been known before the date abandoned. 
 of the letters patent, and was being used at the time when 
 the application for confirmation was made. Lord Campbell 
 said, that the case which the legislature had in view when 
 this enactment was passed was, that where there had been 
 an invention which had been actually practised but which 
 had not continued to be practised, the patent should not 
 be rendered invalid by those abortive attempts, but that 
 where the invention was carried on before the patent 
 was granted, was considered beneficial by those who 
 carried it on, was proved to be beneficial by them had 
 never been abandoned and was carried on by them 
 down to the time when the application was made, the Act 
 
 P. C. C. 378 ; Lamenaude's Pa- (a) 1 Webs. P. R. 553. 
 
 tent, 2 Webs. P. K. 171 ; Stead's (b) Stead's Patent, 2 Webs. P. 
 
 . Patent, 2 Webs. P. R. 146. R. 147. 
 
224 CONFIRMATION OF THE TEEM 
 
 Chap. IX. was never intended to apply; and the application was 
 refused, (a) 
 Confii-mation Where an application was made by an assignee to con- 
 
 adveSy^o firm letters patent for " improvements in an apparatus for 
 patentee."'™^' converting sea water or otherwise impure water into fresh 
 and pure water " and it was stated in the petition that it 
 had been discovered since the date of the assignment that 
 one of the modes of condensing steam from sea water was 
 known but not publicly or generally known or used, and 
 the afiBdavit in support of the petition stated that the 
 patentees believed that they were the true and first inven- 
 tors, the application was opposed on the ground that part 
 of the invention had been published many years before the 
 patent in a well-known book and had also been the subject 
 of a patent. Two specifications were produced in support 
 of this allegation. It was also contended that the peti- 
 tioner ought to have disclaimed that part of the invention 
 which was old. Lord Lyndhurst said that he did not 
 think that the Act was ever intended to apply to the case 
 where the patentees chose to shut their eyes when they 
 might have gone to the ofiice and seen the specifications. 
 That the Act could never be meant to apply to a case 
 where tw6 patents had been taken out for the same thing, 
 the subsequent patentee should have a right to come to 
 the court to apply to have the exclusive benefit of the 
 invention adversely to the rights and interests of the 
 former patentee ; and the petition was dismissed with 
 costs. (&) 
 Extended term As the grant of an extended term is a new grant by 
 
 may be con- " a J 
 
 (a) Card's Patent, 6 Moo. P. (&) Westrupp and Gibbim' 
 
 C. 0. 206 ; Lamenaude's Patent, Patent, 1 Webs. P. E. 554. 
 2 Webs. P. E. 171 ;' HonibalFs 
 Patent, 9 Moo. P. C. 0. 378. 
 
 fii-med. 
 
OF LETTERS PATENT. 225 
 
 new letters patentj subject to the same conditions and Chap. IX. 
 open to the same objections as the original letters patent^ 
 it, is entitled^ in ordinary cases at leasts to the same ad- 
 vantages as the original letters patent and may therefore 
 be confirmed, (a) 
 
 The user in England of an invention prior to the date Scotch patent. 
 of a Scotch patent wiU invalidate the patent^ and such a 
 patent cannot be confirmed. (&) 
 
 The mode of procedure on a petition for confirmation Mode of pro- 
 
 .... 1 . . „ cedure on 
 
 of letters patent is similar to that on a petition tor exten- petition for 
 sion. (c) The petition must be directed to Her Majesty in of letters 
 Council^ and must state the patent^ the specification^ and P^ ™ ' 
 if the applicant is an assignee^ the assignment under which 
 he derives his title, (c^) If the name of the first inventor 
 is known it should be stated in the petition and he should 
 be served with notice in order that he may appear to 
 oppose if he thinks fit. (e) The petition must state all the 
 facts on which the plaintiff relies^ and must be verified by 
 aflidavit. 
 
 In Stead's Patent (/) two petitions had been presented^ ETidence. 
 the second being supplementary to and stating what had 
 taken place subsequent to the presentation 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 use in this country ; 
 and those in support of the second petition stated pro- 
 
 (a) HonibalVs Patent, 9 Moo. (d) Westrupp and Gibbins' 
 P. C. C. 387. Patent, 1 Webs. P. K. 544. 
 
 (b) Robinson's Patent, 5 Moo. (e) Lamenaude's Patent, 2 
 P. C. C. 63 ; S. C. nom. Pow's Webs. P. R. 164. 
 
 Patent, 2 Webs. P. R. 5. (/) 2 Webs. P. R. 143. 
 
 (c) See ante, p. 213. 
 
 Q 
 
226 CONFIRMATION OF TEEM OF LETTERS PATENT. 
 
 Chap. IX. ceedings at law whicli had taken place since the presenta- 
 tion of the first petition, the publications adduced at the 
 trial as impeaching the novelty of the invention and the 
 petitioner's title. It was objected that the affidavits could 
 not be received as proof of the matters contained in them, 
 the intention being that they should be received in addi- 
 tion to other evidence, because the applicant having made 
 a good case might be the only person who knew the real 
 case ; but it was held that the affidavits were admissible 
 and that the opposers might prove their case by other 
 evidence. 
 
CHAPTER X. 
 
 OF ASSIGNMENTS AND LICENCES. 
 
 T BTTBRS patent are gfanted to the patentee, his Chap. x. 
 
 — ' executors, administrators and assigns; there is p ~~ 
 therefore an implied power of assignment. The letters ^^^ig" '^^^ 
 
 ° grant licences 
 
 patent usually contaia a clause restricting all persons g^^^° ^J '^^ 
 
 J, , . . T 1 letters patent. 
 
 trom making, or using, or vending the patented inven- 
 tion, without the consent, licence, or agreement in 
 writing of the inventor, his executors, administrators or 
 assigns, under his or their hands and seals, first had and 
 obtained in that behalf. 
 
 By 15 & 16 Vict. c. 83, s. 35, it is provided that the 
 grantee or grantees of letters patent may assign the 
 letters patent for Bngland, Scotland, or Ireland respec- 
 tively, as effectually as if the letters patent had been 
 originally granted to extend to Bngland or Scotland or 
 Ireland only, and that the assignee or assignees shall 
 have the same rights of action and remedies, and shall 
 be subject to the like actions and suits, as he or they 
 should and would have had, and been subject to, upon the 
 assignment of letters patent granted to Bngland, Scot- 
 land or Ireland, before the passing of the Act. 
 
 More than twelve persons may have a legal and bene- 
 ficial interest in letters patent, (a.) 
 
 The mere fact that a patent has been taken out by Partnership. 
 
 (a) 15 & 16 Vict. c. 83, d. 36. 
 
228 ASSIGNMENTS AND LICENCES. 
 
 Chap. X. Several persons jointly will not of itself constitute a 
 partnership. Any one of the grantees may use the 
 invention without the consent of the others, and cannot 
 be compelled to become jointly concerned in the working 
 of the patent, and the profit or loss arising therefrom, 
 nor to concur with his co-proprietors in granting licences 
 to others to use it. But if the oo-proprietors agree to 
 work the patent together jointly, the relation of partners 
 may be created. 
 
 An agreement to advance a sum of money for the pur- 
 poses of the invention will not constitute a partnership. 
 In Elgie v. Webster, (a) the plaintiff by an agreement 
 in writing agreed to lend the defendant (an inventor) , a 
 sum of money, in order to enable him to perfect his 
 invention, and it was also agreed that if the invention 
 was accomplished, and became of public or private use, 
 the defendant should be entitled to one-third part or 
 share of the same, and of all benefit and advantage, and 
 emoluments to arise or be made therefrom, both for 
 public or private use. The agreement contained an 
 express promise on behalf of the defendant to repay the 
 sum of money advanced by the plaintiff. It was 
 objected on behalf of the defendant that the efiect of 
 the agreement was to constitute a partnership between 
 the contracting parties, and to prevent their suing each 
 other in respect of the matters contained in the agree- 
 ment, but it was held in an action brought to recover the 
 money thus advanced, that this agreement did not con- 
 stitute a partnership between the parties. 
 
 There may be a partnership for working a particular 
 patent, (J) or for working it in a particular place. (c) 
 
 (a) 5 M. & W. 518. (c) Ridgway v. Phillip, 1 C. 
 
 (i) Lovell V. Hicks, 2 Y. & C. M. & R. 415. 
 481. 
 
ASSIGNMENTS AND LICENCES. 229 
 
 An admission by any person that he is a partner is Chap. X. 
 evidence against him, but is not conclusive, and he may 
 show that he has only a limited interest. Thus where A, 
 a patentee, informed B, who had entered into a contract 
 with him, that was his partner, which C admitted ; on 
 an action by B against A and C for breach of the 
 contract, C was allowed to prove his limited interest. 
 Parke, B., said : " It frequently happens in cases where 
 the liability of persons as partners comes in question, 
 that juries are induced to give too much effect to slight 
 evidence of admissions. An admission does not estop 
 the party who makes it ; he is still at liberty, so far as 
 regards his own interest, to contradict it by evidence, (a) 
 It appears that joint owners of a patent are answerable 
 for losses occasioned by their co-adventurers only to the 
 extent of their respective shares, (b) 
 
 A declaration stated that a petition had been presented Agreement for 
 by the plaintiffs at the request of the defendants, and at 
 their own expense, for the granting to the defendant of 
 a patent ; and that the plaintiffs then duly filed at their 
 own expense the provisional specification, and obtained 
 provisional protection, upon condition that the defendant 
 should complete the specification within six months. 
 And that by an agreement in writing made between the 
 plaintiffs and defendants, it was mutually agreed that the 
 defendant should sell to the plaintiffs his patent rights for 
 the sum of £5, such sum to be paid by the plaintiffs to 
 the defendant on their having completed the patent at 
 their own expense ; that thereupon it became necessary 
 in order to enable the plaintiffs to complete the patent 
 
 (a) Ridgway v. Phillip, 1 C. (i) Lovell v. Hicks, 2 Y. & C. 
 
 M. & K. 415. 46. 
 
230 
 
 ASSIGNMENTS AND LICENCES. 
 
 ClIAP. X. 
 
 Statute of 
 Frauds. 
 
 Assignment 
 should be by 
 deed. 
 
 Must be ac- 
 cording to 
 conditions of 
 patent. 
 
 in pursuance of the agreement^ that the defendant 
 should sign and seal a complete specification ; and that 
 the plaintiffs tendered him the necessary specification for 
 his signature. Breach that he would not sign it. It 
 was held that the defendant was bound under this agree- 
 ment to sign the specification, (ft) 
 
 A written proposal containing the terms of a proposed 
 contract signed by the defendant and assented to by the 
 plaintiff by word of mouthy is a sufiBcient agreement 
 within the 4th section of the Statute of Frauds. (6) 
 
 An agreement, whereby all that is to be done by the 
 plaintiff constituting one entire concession for the de- 
 fendant's promise, can be performed within a year, and 
 no part is intended to be postponed until after the expi- 
 ration of the year, is. not within the section, although the 
 performance on the part of the defendant is or may be 
 extended beyond that period, (c) 
 
 An assignment ought to be by deed under hand and 
 seal. The patentee should covenant that he is the true 
 and first inventor, and that the patent is valid. He should 
 also covenant that he will assist the assignee in the case 
 of an application for confirmation. 
 
 A grant of a patent, reserving the patentee's legal title 
 until the determination of a suit then pending, with a 
 covenant that the grantor would upon the determination 
 of the suit assign the patent, was held to vest the legal 
 estate in the patentee without assignment as soon as the 
 suit was determined, (c?) 
 
 Any agreement to assign a patent which is contrary to 
 
 (a) Lewin v. Brown, 14 W. R. (c) lb. 
 
 640. {d) Cartwright v. Amatt, 2 B. 
 
 (J) Smith V. Neale, 2 C. B. & P. 43. 
 (N. S.) 67. 
 
ASSIGNMENTS AND LICENCES. 231 
 
 the policy of the conditions upon which the patent is Chap. X. 
 granted, is void. Thus where a bond was given for 
 payment of £10jOOO with a condition that the money should 
 be paid on the obligee's procuring subscriptions for 9,000 
 shares in a company for the purpose of becoming assignees 
 of a patent and carrying on the patent process ; and the 
 patent contained a proviso that it should be void if as- 
 signed to more than five persons, it was held that as the 
 bond was subject to a condition for the performance of 
 an illegal act, it was void. Lord Tenterden, C. J., said : 
 " Now it is said that the plaintiff might be ignorant that 
 such a consequence would follow : but on this record we 
 cannot find grounds for supposing he was ignorant. If 
 he was not cognisant of the terms of these particular pa- 
 tents, he must be supposed to know the general law of 
 the land. By that all monopolies are illegal, but there is 
 an exception in favour of patent rights, and if he knew 
 that the monopoly proposed to be created could only be 
 justified by the patents, he was bound to know their 
 contents. We cannot presume that he was ignorant 
 of that which it was his duty to know, and presuming 
 that he knew the terms of the patent, the bond is 
 void." (ft) 
 
 The interest of a bankrupt in a patent passes to his Bankruptcy of 
 assignees. (V) Where b,y a private act of parliament, the 
 sole making of a newly-invented machine was vested in 
 certain persons, with a proviso that it should be forfeited 
 in case it should " become vested in trust for more than 
 five persons or their representatives, otherwise than by 
 devise or succession," and two of the patentees became 
 bankrupt, it was held that the assignment of their in- 
 
 (a) Duvergier v. Fellows, 10 (b) Hesse v. Stevenson, 3 B. & 
 
 B. & C. 829. P. 563. 
 
232 
 
 ASSIGNMENTS AND LICENCES. 
 
 Chap. X. 
 
 Tenants in 
 common or 
 joint tenants. 
 
 Licence may- 
 be by verbal 
 agreement. 
 
 Need not be 
 under seal. 
 
 Includes all the 
 privileges of a 
 vendee. 
 
 terest to their assignees^ thougli the number exceeded 
 twenty, was not within the proviso, (a) 
 
 It seems doubtful whether when a patent is vested in 
 trustees upon trust for several tenants in common, or 
 joint tenants, any one of them is at liberty to work it on 
 his own account. (&) But where two or more persons 
 jointly obtain letters patent, any one of them may use the 
 invention without the consent of the others, (c) 
 
 A verbal agreement that a patentee shall supply ma- 
 chines constructed according to his patent to any person 
 constitutes a licence. (cZ) 
 
 A licence will not apparently be void if it is not under 
 seal, so long as it is such a licence as the licensee has 
 bargained for, and he has kept it, (e) and semhle that a 
 licence does not require a stamp if there is no pecuniary 
 consideration. (/) 
 
 A licence to manufacture and sell necessarily includes 
 all the privileges that a vendee can have, including that 
 of selling again without the consent of the patentee, (g) 
 It does not convey an interest in the patent, it is an ex- 
 cuse for an infringement. (K) 
 
 In Lister v. Leather (i) it was argued that if a subse- 
 quent patent for a combination includes a part of an in- 
 vention already protected by patent, it infringes on the 
 
 (a) Bloxam v. Elsee, 6 B. & 
 C. 169 ; M" Alpine v. Mangnall, 
 3 C. B. 491. 
 
 (6) Hancock v. Bewley, 
 Johns. 601. 
 
 (c) Mathers v. Green, L. R. 
 
 1 Ch. 29. See too Re Russell, 
 
 2 De G. & J. 130. 
 
 (d) Crossley v. Dixon, 10 H. 
 L. C. 293. 
 
 (e) Chanter v. Dewhurst, 12 
 M. & W. 823. 
 
 (/) Chanter v. Johnson, 14 M. 
 & W. 408. 
 
 (g-) Thomas v. Hunt, 17 C. B. 
 (N. S.) 183. 
 
 (A) Bower v. Hodges, 13 C. B. 
 774. 
 
 (0 8 El. & Bl. 1017. 
 
ASSIGNMENTS AND LICENCES. 233 
 
 property of another^ and so is a violation of his right, and Chap. X. 
 ought to be held illegal on account of his interest. Lord 
 Campbell said that the answer was, " that the patent for 
 an improvement on an invention already the subject of a 
 patent, if confined to the improvement, is not an infringe- 
 ment of the former patent. The use of the improvement 
 with the former invention, during the existence of the 
 former patent, would be an infringement, but with 
 licence that would be lawful." (a) 
 
 The grant of an exclusive licence does not invalidate Exclusive 
 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, and such a licence would not be 
 invalid, if the districts or district covered by the licence 
 included the whole extent of the patent. (6) 
 
 Where the patentee has a manufactory abroad as well Manufactory 
 as one in England, and disposes of the patented article 
 abroad, he necessarily transfers with the goods the licence 
 to use them wherever the purchaser pleases, unless there 
 is some clear agreement to the contrary. But if he has 
 assigned his patent in either country, he cannot sell the 
 articles so as to defeat the rights of the assignees, (c) 
 
 There is no implied warranty upon an agreement for No implied 
 the sale of or licence to use a patent, that the patent is sale or licence. 
 valid, and it is no answer to an action that the invention 
 is not new, and that the plaintiff is not the true and first 
 inventor. 
 
 In Hall v. Oonder (d) the declaration stated, that by an 
 agreement, made between the plaintiff and the defendants, 
 
 (a) See p. 53. (c) Betts v. Willmott, L. E. 6 
 
 (5) Protheroe v. May, 5 M. & Ch. 239. 
 W. 675. (d) 2 C. B. (N. S.) 22. 
 
234 ASSIGNMENTS AND LICENCES. 
 
 Chap. X. after reciting that tlie plaintiff had invented a method 
 for the prevention of boiler explosions, and had obtained 
 a patent for the use of the same within the United King- 
 dom^ and was desirous of taking out patents in France, 
 Belgium, and such other places as might be found expe- 
 dient ; and that he had already parted with or assigned 
 away an interest in one-half of the said English patent, 
 and was desirous of disposing of the remaining half, to 
 which he declared he had full right and title ; and that he 
 had applied to the defendants to assist him in taking out 
 the foreign patents, and also to purchase his interest ia 
 the English patent; it was agreed that the defendants 
 should take out the foreign patent, and should pay to the 
 plaintiff the sum of £2,500 in such manner as should be 
 mutually agreed upon, and a further sum equal to one 
 tenth part of the net proceeds of one-half of the English 
 patent, from and after the time that the net profits should 
 amount to the sum of £20,000. And in consideration of 
 the engagement on the part of the defendants, the plaintiff 
 agreed to transfer to them one-half of the foreign patents 
 when the same should be obtained, and also one-half of 
 the English patent. 
 
 It was contended, among other things, that the in- 
 vention was wholly worthless and of no public utility and 
 was not new as to the public use and exercise thereof in 
 England, and that the plaintiff was not the true and first 
 inventor. Williams, J., said: '^ With regard to the sale 
 of ascertained chattels, it has been held that there is not 
 any implied warranty of either title or quality unless there 
 are some circumstances beyond the mere fact of a sale 
 from which it may be impUed. ... In this case the thing 
 sold was ascertained, viz. a moiety of a patent granted by 
 
ASSIGNMENTS AND LICENCES. 235 
 
 Her Majesty; there was no express warranty, and whetlier~N:HAi-. X. 
 it be said that the question raised on this plea impeaches / 
 the plaintiff^s title to the thing sold, or its quality, no / 
 warranty can be implied. But did the plaintiff profess 7* 
 to sell and the defendant to buy a good and indefeasible \ 
 patent right ? or was the contract merely to place the J 
 defendant in the same situation as the plaintiff was in ' 
 with reference to the alleged patent ? . . . The plaintiff 
 professed to have invented a method for the prevention 
 of boiler explosions. It is not alleged that he was guilty 
 of any fraud. He must therefore have been an inventor ; 
 for, if he was not he must have known it, and would have 
 been guilty of fraud in pretending to have invented. 
 Whether he was the true and first inventor within the [^ 
 meaning of the statute of James is another question. (^ 
 The first material allegation in the plea is that the 
 alleged invention was wholly worthless and of no utility 
 to the public. Now, that was a matter as much within'^ 
 the knowledge of the defendants as of the plaintiff. The y 
 next allegation, viz. that it was not new as to the public 
 use thereof in England, and that the plaintiff was not the 
 true and first inventor, was also a matter as much within 
 the knowledge of the defendants as of the plaintiff. They 
 had the same means of inquiring into the fact and of 
 learning whether it had been in use or the invention had 
 been previously made known in England. Why, there- 
 fore, should we assume that the plaintiff meant to assert 
 that the patent was indefeasible and that the defendants 
 purchased on that understanding rather than that, each 
 knowing what the invention was, and having equal 
 means of ascertaining its value, they contracted for the 
 patent, such as it was, each acting on his own judgment ? 
 
236 ASSIGNMENTS AND LICENCES. 
 
 Chap. X. | We think that the latter was the true nature of the 
 contract and that there was no warranty^ express or 
 implied." (a) 
 Failure of con- The payment of a sum of money for a continuation of a 
 licence to use a patent about to expire^ on prolongation 
 of the term being obtained, gives the licensee a right to 
 require an application for prolongation of the patent to 
 be made, not merely to have the benefit of the prolonga- 
 tion if it is granted, and the licensee, if no application is 
 made, will be entitled to maintain an action for the 
 recovery of the money so paid, on the ground that the 
 consideration has wholly failed. (6) 
 Money paid for /" A licensee Cannot, if he discovers that the patent is 
 patent cannot /( void, recover back money paid for its use. Thus, where a 
 
 be recovered. / T j. j • • i j.- x- -j. ^ 
 
 1 1 licence was granted m consideration oi an annuity secured 
 \ by bond, which was paid for several years, and it was 
 I then discovered that the invention had been in public 
 
 1 use before the patent, unknown to the patentee when he 
 / granted the licence, it was held that the licensee could 
 
 not recover back the money he had paid on account of 
 the annuity. Sir J. Mansfield, 0. J., said : " Two per- 
 sons equally innocent make a bargain about the use of a 
 patent, the defendant supposing himself to be in posses- 
 sion of a valuable patent right and the plaintiff supposing 
 the same thing. Under these circumstances the latter 
 agrees to pay the former for the use of the invention, 
 and he has the use of it ; non constat, what advantage he 
 made of it ; for anything that appears he may have made 
 considerable profit. These persons may be considered 
 
 (a) See also Smith v. Neale, Trotman v. Wood, 16 C. B. (N. 
 
 2 C. B. (N. S.) 67 ; Smith y. S.) 479. 
 
 Scott, 6 0. B. (N. S.) 771 ; (J) Kmwles v. Bovill, 22 L. 
 
 Noton V. Brooks, 7 H. & N. 499 ; T. (N. S.) 70. 
 
ASSIGNMENTS AND LICENCES. 237 
 
 in some measure as partners in the benefit of this inven- \ Chap. X. 
 
 tion;" and Heathy J.j said: "We cannot take an account 
 
 here of the profits. It might as well be said, that if a 
 
 man lease land and the lessee pay rent, and afterwards 
 
 be evicted, that he shall recover back the rent, though he 
 
 has taken the fruits of the land." (a) But if money is Ui^ess there is 
 
 paid for the use or purchase of a patent which has been 
 
 obtained by fraud it can be recovered." (b) 
 
 A patentee, after he has parted with his interest in the Estoppel. 
 patent is estopped from contesting its validity and can- 
 not contend that he had no title to convey, (c) Nor can 
 a licensee by deed refuse to pay royalties or contend that 
 the patent is invalid on the ground of want of novelty or 
 utility in the invention ; for the principle of estoppel is 
 that where a man has entered into a solemn engagement 
 by deed, under his hand and seal, as to certain facts, he 
 shall not be permitted to deny any matter which he has so 
 asserted, [d) even if the patent has been found invalid 
 at law upon proceedings between the patentee and third 
 partieSj (e) and the principle applies even if no formal 
 licence has been executed, but royalties have been paid. (/) 
 But he may refuse to continue the use of the patent and 
 
 (a) Taylor v. Hare, 1 Bos. & C. & F. 726 ; Hills v. Laming, 2 
 
 P. (N. R.) 260. Exch. 256 ; Noton v. Brooks, 
 
 (5) Lovell V. Hicks, 2 Y. & 7 H. & N. 499 ; Smith \. 
 
 Coll. 46. Scott, 6 C. B. (N. S.) 771 ; 
 
 (c) Oldham v. Langmead, 3 Lawes v. Purser, 6 E. & B. 
 
 T. K. 441 ; Hall v. Conder, 2 930 ; Besseman v. Wright, 6 W. 
 
 C. B. (N. S.) 22 ; Walton v. R. 719. 
 
 Lavater, 8 C. B. (N. S.) 162; (e) Grover and Baker Sewing 
 
 Chambers v. Crichley, 33 Beav. Machine Co. v. Millard, 8 Jiir. 
 
 374. (N. S.) 713. 
 
 (^d) Bowman v. Taylor, 2 A. (/) Crossley v. Bixon, 10 H. 
 
 & E. 291 ; Baird v. Neilson, 8 L. C. 293. 
 
238 ASSIGNMENTS AND LICENCES. 
 
 CuAP. X. to make any future payments ; (a.) and after tlie licence has 
 determined he may contest the validity of the patent. (6) 
 A purchaser or licensee may set up the defence that the 
 patent is bad on the ground that it was obtaiaed by 
 fraud, (c) 
 
 If the claim in the specification is susceptible of two 
 constructions, one of which would make the specification 
 badj and the other would make it good, a licensee may 
 insist that the latter is the true construction, (d) If he 
 use the patented invention in other machines obtained 
 from another quarter, he cannot contest the validity of the 
 patent, but only that the other machines did not embody 
 its principle, (e) 
 
 Where in an action for infringement against the 
 members of a partnership firm, the defendants submitted 
 to judgment before any pleadings filed and immediately 
 took a licence from the plaintiff to use his invention for a 
 term of five years; in a suit in equity to restrain the 
 original defendants and two new partners from infringing 
 the patent; it was held that they were not estopped 
 from contesting the validity of the patent. (/) An 
 agreement to purchase a licence to use a patent will not 
 in equity preclude the purchaser from disputing its 
 validity, {g) 
 
 (a) Hayne v. Malthy, 3 T. E. {d) Trotman v. Wood, 16 C. B. 
 
 438 ; NeiUon v. Fotliergill, 1 (K S.) 479. 
 
 Webs. P. E. 287 ; Pidding v. (e) Crossley v. Dixon, 10 H. 
 
 Franks, 1 Mac. & G. 56. L. C. 293. 
 
 (S) Dangerfield v. Jones, 13 (/) Gaucher v. Clayton, 11 
 
 L. T. (N. S.) 144. Jur. (N. S.) 107. 
 
 (c) Hayne v. Maltby, 3 T. E. (g-) Baxter v. Comhe, 1 Jr. 
 
 441 ; Hall v. Conder, 2 C. B. Ch. 284 ; Pidding v. Franks, 1 
 
 (N. S.) 22; Lawes v. Purser, 6 Mao. & G. 56. 
 E. & B. 930 ; Pidding v. Franks, 
 1 Mac. & G. 56. 
 
ASSIGNMENTS AND LICENCES. 239 
 
 If a licensor waives any right to forfeit the licence by Chap. X. 
 reason of breaches in the termSj he will not be entitled ^yaiver by 
 to an injunction to restrain the licensee from using the licensor, 
 patent, (a) A covenant by the licensee of a patent for Coyenant to 
 
 ■ -, n 1 1 1 -ii 1 "^® patented 
 
 the residue oi the term^ that he will not make or use any inyention only. 
 of a certain class of machines without the patented 
 invention applied to them is not void as a covenant in 
 restraint of trade^ for the restraint is not greater than the 
 privilege. (&) 
 
 The sale of a moiety of a patent right conveys an Sale of moiety, 
 interest j9ro tanto in the patent, (o) 
 
 (a) Warwick v. Hooper, 3 (c) Walton v. Lavater, 8 C. B. 
 
 Mac. & G. 60. (N. S.) 162. 
 
 (6) Jones v. Lees, 1 H. & N. 
 189. 
 
CHAPTER XI. 
 
 OF REGISTRATION. 
 
 Chap. XI. 
 
 Register of 
 proprietors 
 kept at office. 
 
 Registration 
 relates back to 
 day of assign- 
 ment. 
 
 Fraudulent 
 entry in re- 
 gister. 
 
 A REGISTER of proprietors of patents is kept at the 
 -^^- office, in which is entered assignments of letters 
 patent, licences and other matters affecting their pro- 
 prietorship, certified copies of entries are receired in 
 evidence, and are prima facie proofs of assignment. 
 But until such entry as is directed by the Act is made, the 
 grantee is deemed to be the exclusive proprietor of the 
 letters patent, and of all licences and privileges connected 
 with them, (a) 
 
 The registration relates back to the day of assignment 
 so as to enable an assignee to maintain an action for an 
 infringement committed between the date of the assign- 
 ment and of the registration, {&) and an assignee who has 
 not registered his deed of assignment cannot maintain 
 an action, (c) but where there has been a bond fide assign- 
 ment and the assignee has neglected to register, a subse- 
 quent assignee cannot, by prior registration, defeat the 
 rights of the first assignee, {d) 
 
 Any person who wilfully causes a false entry to be 
 made in the register, or who wilfully forges or causes to 
 
 (a) 15 & 16 Vict. c. 83, s. 35. 
 
 (b) Hassall v. Wright, 10 Eq. 
 509. 
 
 (c) CkoUeti V. Hoffman, 1 El. 
 & Bl. 686. 
 
 (c?) QreerHs Patent, 24 Bear, 
 145. 
 
REGISTRATIok. 241 
 
 be forged any copy of any entry^ or produces or tenders Chap. Xl, 
 any such copy in evidence knowing it to be forged, is 
 guilty of a misdemeanour, (a) 
 
 Any person aggrieved by any entry in the register of Expunging 
 proprietors may apply by motion to the Master of the 
 Rolls or to any of the Courts of Common Law for an order 
 to expunge, vacate, or vary such entry, (b) 
 
 The Court has power to expunge any entry fraudulently 
 made, while the right in the patent is in another person, 
 and can direct any facts relating to the proprietorship to 
 be placed on the register, it will not decide questions of 
 rights and titles ; those must be deduced from the facts 
 that appear on the register by any person dealing with the 
 patent. Thus when A assigned one-half of his patent to 
 B on the 13th of January, 1851, but B did not register the 
 assignment till the 5th of August, 1857, and in the mean 
 time A assigned the whole of his patent to C by a 
 deed registered the 21st of June, 1853, which by recital 
 excepted a licence to work and use granted to B, it was 
 held that C had constructive notice of B^s rights, and an 
 entry was ordered to be made in the register that the 
 licence referred to in O^s assignment was the deed of 
 assignment to B subsequently registered, (o) 
 
 Where letters patent are granted to two persons jointly joint 
 neither of them is entitled to cause any entry to be made lot prAnSce 
 in the register which purports to affect or prejudice the rilhts°by'^ 
 rights of the other. Thus where one of two joint ^■i*'''*^^- 
 grantees assigned his share in the patent by deed and 
 purported to release the assignee from all claims by 
 either of the patentees in respect of the patent, and this 
 
 (a) 15 & 16 Vict. 0. 83, s. 37. (c) Morey's Pate?it, 25 Beav. 
 
 (J) Jb, 581. And see Green's Patent, 
 
 24 Beav. 145. 
 
242 EEGISTEATION. 
 
 Chap. XI. deed was entered on the register verbatim ; it was held 
 that the non-assigning patentee was entitled to have the 
 whole entry expunged, (a.) 
 No appeal There is no right of appeal from an order made by the 
 
 fi'om Master ,^ „ ° ^^ . . '' 
 
 of the Rolls. Master of the Rolls under this section, (b) 
 Copies of Certified copies of all entries made in the register of 
 
 proprietors are sent to Edinburgh and Dublin, (c) 
 
 (a) Horsley and Kriightoris (h) Horsley and Knighton's 
 
 Patent, L. R. 8 Eq. 475. Patent, L. R. 4 Ch. 784. 
 
 (c) 15 & 16 Vict. c. 83, s. 35. 
 
CHAPTER Xll. 
 
 OF INFRINGEMENT. 
 
 A NY person who directly or indirectly uses a patentee's Chap. xii. 
 
 ■'■ *- invention for the purposes of profit without his use ofinven- 
 
 licence is guilty of an act of infringement. An infringe- tion for profit 
 
 ment, said Sir JST. 0. Tindal, C. J.j is a copy made after ment. 
 and agreeing with the principle laid down in the specifi- 
 cation, (a) 
 
 A slight departure from the patentee's specification Colourable 
 
 nil c • ^ ■ D ly 1 difffirence only 
 
 tor the purpose or evasion only is of course a iraud upon will be in- 
 the patent, and the question, therefore, that always arises, ""^S^™®"*- 
 is, whether the mode of working by the person who is 
 alleged to have committed the act of infringement has or 
 has not been essentially or substantially different, (&) that 
 is to say whether, in the case of a machine, the two inven- 
 tions are the same or substantially the same mode of 
 carrying the principle into effect, or accomplishing the 
 object desired. In Bovill v. Pimm (c) the plaintiff's 
 invention consisted in the application of ventilating vanes 
 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 
 
 (a) Galloway v. Bleaden, 1 R. 242 ; Stead v. Anderson, 1 
 Webs. P. R. 523. Webs. P. R. 155. 
 
 (b) Hilly. Thompson, 8 Taunt. (c) 11 Exch. 739, 
 491 ; 2 B. Moo. 433 ; 1 Webs. P. 
 
244 INFEINGEMENT. 
 
 Chap. XII. of air parallel to the axis of the vane was attached exter- 
 nally to the eye of the upper millstone, and thus the screw 
 vane being set in rapid motion, the air was compelled to 
 pass through the eye into the centre of the stones and so 
 find its way out again; the defendant distributed the 
 air from the eye of the mill-stones, by means of an air box 
 placed below them into which air was forced by the rapid 
 rotation of a fan or blower which caused a current of air 
 perpendicular to the axis of the fan ; and the air was con- 
 ducted by a pipe through the eye of the lower stone to 
 the centre of the two stones and there distributed between 
 them. It was held that the invention was no infringe- 
 ment of the plaintiff's ; but that each was a new method 
 of obtaining a well-known object by the common principle 
 of obtaining a current of air by a rotating vane. 
 
 In Walton v. Bateman, (a) Cresswell, J., said that the 
 " defendants are not to resemble a counterfeit ; they are 
 / not to make any addition to or any subtraction from the 
 ; patent, availing themselves of what is in truth the subject- 
 1 matter of it, so as by such alteration to pretend that they 
 I are the true inventors of that article." 
 Substancp of The substance and not the mere form of the invention 
 
 invention to be . , i ■ t -i n\ 
 
 considered. IS to be considered. (6) 
 
 In Walton v. Fotter (c) Sir N. 0. Tindal, 0. J., said: 
 " Where a party has obtained a patent f®r 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 circumstances 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, 
 
 (a) 1 Webs. P. R. 616. (c) 1 Webs. P. R. 586. 
 
 (6) Morgan v. Seaward, 1 
 Webs. P. R. 171. 
 
INPRINGEMENT. 245 
 
 because that would be in effect and in substance an inva- Chaf. xil. 
 sion 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 immaterial, 
 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 defen- 
 dants have availed themselves of the plaintiff's invention 
 in order to make that article which they have sold in the 
 way of their trade ; whether in order to make that 
 they have availed themselves of the invention of the 
 plaintiff." (a) 
 
 Where the patent is for an invention which consists in 
 the use of certain proportions, the patentee is not bound 
 to limit his claim to the precise proportions, and even if 
 he does do so, a stranger will not be allowed to evade the 
 patent by slightly varying the amounts used. (6) 
 
 It is no answer to an action for the infringement of a improvements 
 patent that the defendants have greatly improved upon no answer!" 
 the machinery or apparatus constructed according to the 
 plaintiff's specification. Thus where the plaintiff's patent 
 was for the " improved application of air to produce heat 
 in fires, forges and furnaces," and the invention consisted 
 in heating the air between the time of its leaving the 
 blowing apparatus and its introduction into the 
 furnace in any way in any close vessel exposed to the 
 action of heat, and it was proved that the defendants' 
 apparatus was much superior to that of the plaintiff's but 
 that the principle in both was the same, Parke, B., 
 said : "If the specification is to be understood in the sense 
 
 (a) See also Bateman v. Oray, (b) The Patent Type Founding 
 
 Macr. 102. Co. v. Richard, Johns. 385. 
 
246 INTEINGEMENT. 
 
 Chap. XII. claimed by the plaintifi, the invention of heating the air 
 between its leaving the blowing apparatus and its intro- 
 duction into the furnace, in any way, in any close vessel, 
 which is exposed to the action of heat, there is no doubt 
 that the defendants' machinery is an infringement of that 
 patent, because it is the use of air which is heated much 
 more beneficially, and a great improvement upon what 
 would probably be the machine constructed by looking 
 at the specification alone ; but still it is the application 
 of heated air, heated in one or more vessels between the 
 blowing apparatus and the furnace, and therefore if it 
 should turn out that the patent is good, and the specifica- 
 tion is good, though unquestionably what the defendants 
 have done is a great improvement upon what would be 
 the machinery or apparatus constructed under this patent, 
 it appears to me that it would be an infringement of 
 it." (a) 
 
 In The Electric Telegraph Go. v. Brett(h) the patentee's 
 invention was described as an invention of "improve- 
 ments in giving signals and sounding alarms in distant 
 places, by means of electric currents transmitted through 
 metallic circuits." The defendant used the earth as a 
 return circuit by plunging the two ends of the wire into 
 it, and it was held that such a circuit, if used in connection 
 with the machinery for signals, would be an infringement, 
 as the use of the earth was merely an equivalent for the 
 return wire. 
 The substi- Any person who in order to arrive at the same result 
 
 mechanical aimed at by the plaintiff's patent substitutes for any 
 attail'thesame portion of the patented invention which is new and 
 
 result is an in- 
 fringement. 
 
 (a) Neilson v. Harford, 1 (J) 10 C. B. 838. 
 
 Webs. P. K. 310. 
 
INrRINGBMENT. 247 
 
 usefulj some mechanical equivalent^ so that his machine Chap. XII. 
 is only colourably different from that of the patentee^ is 
 guilty of an act of infringement. ( a) 
 
 In Webster v. JJtherih) the invention consisted in an 
 improvement on the patent percussion gunlock, 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 lock 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. 
 
 In Bovill V. Moore, (c) Gibbs, 0. J., said, referring to 
 the use of mechanical equivalents : " I remember that 
 was the expedient used by a man in Cornwall, who en- 
 deavoured to pirate the steam engine. He produced an 
 engine, which, on the first view of it, had not the least 
 resemblance to Boulton and Watt's. 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 Watt — it acted 
 as well one way as the other ; but if you set it upright, it 
 was exactly Boulton and Watt's engine." 
 
 "If," said Sir F. Pollock in Sellers v. Dickinson, (d) 
 " a portion of a patent for a new arrangement of machi- j 
 nery is in itself new and useful, and another person, for ' 
 the purpose of producing the same effect, uses that por- 
 tion of the arrangement, and substitutes for the other i 
 matters combined with it another mechanical equivalent, 
 that would be an infringement of the patent." (e) But the 
 
 (a) Morgan v. Seaward, 1 (c) Dav. P. C. 405. 
 Webs. P. R. 171. id) 5 Exch. 326. 
 
 (b) Gods. 232. (e) And see Harwood v. The 
 
248 INFRINGEMENT. 
 
 Chap. XII. 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 parti- 
 cular machinery, by means of which a well known object 
 is attained, (a) 
 Or chemical The substitution of a chemical equivalent in a process 
 
 ' is an infringement. It is very difficult, however, to 
 apply the doctrine of equivalents to a chemical process. 
 In the case of mechanical equivalents, the result can be 
 generally predicted with certainty ; whereas, in the case 
 of chemical equivalents, that is not so, and there may be 
 such an amount of experiment required as to constitute a 
 new discovery. 
 
 Although exactly the same materials may not be used 
 in a similar process ; yet if the same result is arrived at 
 by the introduction of some step into the process, which 
 is not absolutely necessary, and which is merely intro- 
 duced for the purpose of evasion, this will be an infringe- 
 ment. Thus, where the plaintiff's invention consisted in 
 making metal plates for sheathing the bottoms of ships, 
 of an alloy of zinc and copper in certain proportions, and 
 the specification stated that the invention was to be per- 
 formed by melting " best selected copper " and " foreign 
 zinc " together in certain proportions, and it was proved 
 that the metal made at the defendant's works was, in 
 fact, made of the same materials and in the same propor- 
 tions as pointed out in the plaintifi''s specification. Lord 
 Lyndhurst said, that if the materials were originally 
 combined in the same proportions, the infringement was 
 clear; and that if other materials were purified in the 
 
 Great Northern Railway Co., (a) Curtis v. Piatt, 35 L. J. 
 
 L. R. 11 H. L. C. 654; Bate- (Ck) 852. 
 man v. Gray, Macr. 102. 
 
INFRINGEMENT. 249 
 
 course of manufacture, there would be a colourable imita- CirAp. Xll. 
 tion. (a) 
 
 An action was directed to be tried at law, to decide 
 the title to the patent, when Sir N. 0. Tindal, C. J., 
 said : " Further, the plaintiff says (and that evidence is 
 before you) , that in the month of April, and when the 
 mode of making it and the materials of which it was 
 made were somewhat altered, that is, when, according to 
 the testimony of defendant's witnesses, they used nothing 
 but cake copper, and not the purest copper obtained 
 from the regule of the copper, as the witnesses have 
 stated, yet still it would be for you to say whether, if the 
 very same effect and result is produced, it could have 
 been produced in any other way than by some mode of 
 altering the properties of the common cake copper ; 
 because there has been evidence brought before you that 
 the cake copper would not produce the result, and be 
 attended with those properties which the plaintiff has 
 taken out his patent for ; and, therefore, upon that second 
 branch you will have to ask yourselves whether, seeing 
 that which has been used, and the analysis of it, and the 
 result of such analysis, and the mode in which the wit- 
 nesses on the part of the defendants explained that it 
 was carried on, stating certainly that nothing was used 
 but the cake copper for that purpose; whether in the 
 mode of using that cake copper, which before did not 
 produce the result of the plaintiff's discovery, something 
 or other must not have been managed or contrived on 
 the part of the defendants to give it that purity which, 
 if you are satisfied upon the evidence, it did not possess, 
 it must have had through their instrumentality. If it 
 
 (a) Muntz v. Foster, 2 Webs. P. R. 93. 
 
250 INFRINGEMENT. 
 
 Chap. XII. were SO, that would be a contrivance, and an evasion of 
 the direct letter and description of the patent. Although 
 the patent describes the copper must be of the purest 
 quality (and that seems to me to be the sense of the 
 specification) , yet, if persons could take an inferior kind 
 of copper, and by dressing it up, and by some particular 
 way of melting and refining it give it exactly the same 
 eficct as the best kind of copper would have done, it must 
 be for you to say whether in that case they intended to 
 imitate (as one branch of the declaration states they did) 
 and to evade the patent which the other party had granted 
 to him." (a) 
 
 In Stevens v. Keating, {h) the plaintiff claimed the 
 manufacture of cement, or a composition equivalent to 
 cement, by the union of gypsum, acid and alkali. The 
 defendant claimed the manufacture of cement by com- 
 bining gypsum, sulphate of lime, or other calcareous 
 substances, with borax. On an application for an in- 
 junction Lord Cottenham said : " Prima facie that may 
 appear to be a very different thing, because till you 
 come to examine what borax is, it may appear that borax 
 is some substance totally different, and not within what 
 the plaintiff discovered; that borax is a substance of 
 itself which is capable by combination with gypsum of 
 producing very hard cement ; and that the patentee has 
 no right to say, I am entitled to the exclusive privilege, 
 because I claim the invention of uniting gypsum with 
 acid and alkali. But then when we find that borax itself 
 is composed of an acid and an alkali, where is the dif- 
 ference ? If borax is an article used in the trade found 
 
 (a) Mmtz V. Foster, 2 Webs. (J) 2 Webs. P. R. 176. 
 
 P. R. 101. 
 
INFRINGEMENT. 251 
 
 in a natural state, but used as an artificial composition^ Chap. -Xir. 
 composed and compounded of an alkali and acid, ia it 
 not exactly the same thing 'as if the plaintiff had said, I 
 claim as my invention to be the uniting with gypsum the 
 acid and alkaU found in borax ? It is hardly a different 
 mode of describing the same thing. He has- adopted 
 different language, but if the language conveys the same 
 meaning, it is the same thing." An injunction was 
 granted, the plaintiff being ordered to bring an action, 
 which was tried before Sir P. Pollock, 0. B., (a) who in 
 summing up said : " The only point I have to leave to 
 you is whether you think the defendant has infringed 
 the first patent of the plaintiff by using boracic acid and 
 soda, that is, in the shape of borax, instead of the pearlash, 
 which is potash and sulphuric acid, the only alkali and 
 only acid mentioned in the specification. ... It has 
 been said that this borax which the defendant uses is a 
 chemical equivalent. I may say that I do not quite go 
 along with the doctrine of equivalents in chemistry, 
 applied in the same way as in mechanics, and those mat- 
 ters to which you can apply the principles of the exact 
 sciences. If a man discovers a machine that can be ' ^ 
 successfully used to produce any effect, whether to print 
 a newspaper, to make a stucco, to Hght an apartment, or 
 to do any process whatever, it is well known that if he 
 uses a crank there are two or three substitutes for a 
 crank ; if he use one mode of changing the direction of 
 motion, there are three or four perfectly well known 
 means of doing that ; and if he puts in a specification 
 describing his machine, and somebody comes and in- 
 stead of a crank substitutes something else, or if instead 
 
 (a) 2 Webs. P. R. 182. 
 
 \ 
 V 
 
 ; 
 
252 INFRINGEMENT. 
 
 Ciiip. XII. of a pulley to change the motion, he substitutes a wheel 
 or some adaptation of wheels to change the motion, 
 everybody will at once see that to be an evasion of the 
 patent, and for this plain reason, that all these equiva- 
 lents are perfectly well known ; they are just as well 
 known as' that 10 added to 6 makes 16, and that 8 added 
 to 8 makes also 16. In the mechanical sciences, or 
 wherever you can apply the exact sciences, you can fre- 
 quently predict the results without the slightest difficulty, 
 and with the same certainty as that with which a skilful 
 arithmetician can tell you what will be the amount of 
 certain numbers added together, and that a certain other 
 set of numbers apparently differing from them altogether 
 will when added together produce the same result, with 
 precisely the same certainty a skilful mechanic will teU you 
 that such and such a combination will produce a result, 
 and that such and such another combination to the ordi- 
 nary eye apparently totally different will produce pre- 
 cisely the same result, but looked at with the experienced 
 eye of a mechanic he would say. Yes, here appears to be 
 a great difference ; here is a lever instead of an inclined 
 plane, a pulley instead of two wheels to change the 
 motion and so on ; but a skilful mechanic will say, the 
 general expression in all these might be put down as 
 exactly the same ; so that however different they may ap- 
 pear to the eye, they are to the mind precisely the same. 
 " I do not think that doctrine appHes altogether to the 
 case of chemistry, because although you can predict with 
 confidence in mechanics in some instances, and in some 
 cases where mathematics can be applied, in chemistry you 
 almost entirely fail. You cannot — because sulphuric 
 acid will succeed — tell at all that nitric acid will succeed, 
 or that any other acid will succeed, until you have tried. 
 
INFRINGEMENT. 253 
 
 They do not exist in any relation to each other as numbers Chap. xil. 
 do, or as mechanical science presents to you the different 
 mechanical powers. Tou cannot anticipate the result, 
 it is a mere question of result upon experiment. Still, 
 there may be a probable anticipation of a result which 
 may be treated and properly treated by a jury as merely 
 a servile imitation or else a colourable evasion of the 
 patent. That may occur in chemistry ; and where one of 
 the witnesses in reference to this case stated that he 
 thought borax was a salt that would most probably sug- 
 gest itself to anybody as likely to answer where sulphate 
 of potash has succeeded, I must own in the first instance, 
 with the highest respect for the gentleman who was 
 giving that evidence, I heard it with very great surprise ; 
 but when explained it was perfectly true, perfectly in- 
 telligible. . . . The question was asked, ' If you wish to 
 make a cement similar to the plaintiff's without using 
 sulphuric acid and potash, what would you suggest ? ' 
 And the answer was, ' I should give the preference to 
 borax.' I could not conceive why sulphuric acid, being 
 a very strong acid, boracic acid a very weak one, and 
 potash and soda being very analogous as the two fixed 
 alkalis, I could not understand why anyone's attention as 
 a chemist would be directed to borax more than any other 
 salt. Then it is explained. He says this, ' Sulphate of 
 potash acts as a flux; borax is a salt that also acts as a flux. 
 This opinion I obtained, for I examined the substance 
 with a microscope, and I observed that particles of the 
 plaintiff's cement presented to the microscope the ap- 
 pearance of having melted. I therefore thought that any 
 salt that would operate as a flux would probably answer 
 better than any other salt, therefore I should have used 
 borax.' But if borax is used merely as a flux, and not 
 
254 INTRINGEMENT. 
 
 Chap. XII. used because it is a mixture of an alkali and an acid, I 
 stould say tliat really has nothing to do with the infringe- 
 ment of the patent, any more than if they had used some 
 totally foreign material that might be suggested, for 
 instance, some of the fifty odd metals that exist ; if any 
 one of those should be used as a flux, being neither an 
 acid nor an alkali, he might have used that flux metal and 
 that could not be an infringement of the patent. The 
 use of borax merely as a flux and not as an alkali and 
 acid would probably be considered as no evasion of the 
 patent. . . . Then if sulphate of potash so used {i. e. used 
 instead of its ingredients) would be an infringement, 
 would borax, which is the boreate of soda, be an infringe- 
 ment ? Why, soda is an alkali, and boracic acid is an 
 acid, and an acid that exists in a separate form ; it might 
 be used, it has been used ; and the question is, is that 
 within the scope and compass in point of fact of the 
 plaintiff's specification ? assuming that the plaintiff claims 
 acids and alkalis beyond those that are specifically named. 
 The true construction in point of law of the specification 
 is in my judgment that he does claim acids and alkalis 
 beyond those he mentions. You will have to say whether 
 in your judgment what the defendant has done has been 
 within the scope of the plaintiff's invention, or whether it 
 is in imitation of it." 
 
 The great dififtculty that there is in deciding whether 
 a subsequent chemical process does or does not consist in 
 the substitution of a chemical equivalent is well illustrated 
 by the case of Heath v. Unwin. (a.) 
 
 The patent was for "certain iinprovements in the 
 manufacture of iron and steel." The patentee declared 
 
 (a) 2 "Webs. P. K. 216 ; on appeal, 5 H. L. C. 505, nom. Unwin 
 \. Heath. 
 
INrRINGEMENT. 255 
 
 the nature of his invention to be among other things^ the Chap. XII. 
 use of a certain portion of oxide of manganese in the 
 process of converting cast iron into malleable iron by 
 the process of puddling ; and the use of carburet of 
 manganese in any process whereby iron is converted into 
 cast steel. The specification after describing the use of 
 oxide of manganese in the description of another part of 
 the invention, proceeded to describe the part of the 
 process alleged to have been infringed, in these terms : 
 " Lastly, I propose to make an improved quality of oast 
 steel by introducing into a crucible bars of common 
 blistered steel, broken as usual into fragments, or a mix- 
 ture of cast and malleable iroUj or malleable iron and 
 carbonaceous matters, along with from one to three per 
 cent, of their weight of carburet of manganese, and 
 exposing the crucible to the proper heat for melting the 
 materials, but I do not claim the mixture of any such 
 mixture of cast and malleable iron or malleable iron and 
 carbonaceous matter^ as any part of my invention, but 
 only the use of carburet of manganese in any process for 
 the conversion of iron into cast steel." Carburet of 
 manganese is formed by the fusion of black oxide of 
 manganese with carbonaceous matter. The defendant 
 never used carburet of manganese by putting any of it 
 into the crucible, but he placed the black oxide and 
 carbonaceous matter together in the crucible, and 
 scientific witnesses gave their opinion, that those two 
 substances would form during the process of conver- 
 sioUj and before actual union with the melted steel, 
 carburet of manganese in a state of fusion. The jury 
 found that supposition to be true, but also found that the 
 quantity of carburet so formed would be less than one 
 per cent, of the weight of steel in the crucible. Upon 
 
256 INFRINGEMENT. 
 
 Chap. XII. thes6 facts the Court of Exchequer held that there had 
 been no infringement. Parke, B., said, in delivering the 
 judgment of the Court : " In order to decide this (the 
 question of infringement), we must first determine for 
 what invention the patent as explained by the specifica- 
 tion is taken out. It is not for the use of oxide of 
 manganese in the melting of cast-steel, for carburet of 
 manganese is expressly mentioned and distinguished from 
 oxide of manganese ; nor could the patent for the use of 
 the oxide have been supported, as that substance had been 
 used long before in steel making ; nor is it for the use 
 of oxide of manganese in any mode of combination with 
 carbon generally. If it had, it would have been liable to 
 a similar objection, as oxide of manganese had been used 
 in crucibles containing in their construction a quantity of 
 carbonaceous matter, with a portion of which it would 
 necessarily combine during the process ; nor is it for the 
 use of the oxide with such a quantity of carbon as would 
 deoxidize it and leave the manganese alone to operate 
 upon the steel, so that neither the quantity of the steel be 
 altered nor the crucible destroyed by the oxide of manga- 
 nese abstracting, as it otherwise would do, some quantity 
 of carbon from them. The patent is obtaiaed for the use 
 of one particular combination of carbon and manganese, 
 the metallic substance called carburet of manganese, and 
 for the use of it in that state. The specification is 
 expressly for the employment of carburet of manganese, 
 and the mode of using it, is by putting a certain quantity 
 by weight of that substance in an unmelted state into the 
 crucible. This being, in our opinion, the true construc- 
 tion of the specification, it is clear that the defendant has 
 not directly infringed the plaintiff's patent, for he has 
 never used that substance in the mode described in the 
 
INFRINGEMENT. 257 
 
 specification. Then comes the question whether he has Chap. XII. 
 indirectly infringed the patent by imitating and using the 
 same patent substantially, but making a colourable varia- 
 tion ; now 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 considered as only making a colourable 
 variation. But here he has not done so. It is quite 
 clear upon the evidence that the defendant never meant 
 to use the carburet of manganese at all ; he certainly never 
 knew — and there is no reason to suppose that prior to 
 this investigation any one else knew — that the substance 
 would be formed in a state of fusion; and it is a mere 
 matter of speculative opinion (though after the verdict 
 we must assume it to be a correct opinion among men of 
 science) that it would, but it was clearly not ascertained 
 and stUl less was it a well-known fact. There was, there- 
 fore, no intention to imitate the patented invention, and 
 we do not think the defendant can be considered to be 
 guilty of any indirect infringement if he did not intend 
 to imitate at all." 
 
 Two years after this case the case of Stevens v. Keat- 
 ing (a) was decided, and as the doctrine of intention was 
 there dissented from, (&) another action was brought by 
 Mr. Heath in the Court of Common Pleas, (c) Sir C. 
 Cresswell considered that he was bound by the decision 
 of the Court of Exchequer and directed a verdict for the 
 defendant on the issue of not guilty, saying : " My ruling 
 is simply this, that the use of the ingredients of the oxide 
 of manganese and the carbonaceous matter was not an 
 
 (a) 2 Webs. P. R. 175. (c) 2 Webs. P. E. 228. 
 
 (6) See post, p. 277. 
 
258 INFRINGEMENT. 
 
 Chap. XII. infringement of the patent^ although those ingredients 
 form a carburet of manganese before it entered into 
 combination with the steel." 
 
 The case then went before the Court of Exchequer 
 Chamber^ (a) where three of the judges held that there had 
 been an infringement of the patent. Plattj B., said : 
 " Whether the carburet or its constituent parts separately 
 are put iato the melting-pot could not make any differ- 
 ence if those parts afterwards combined, and in their 
 combined state acted in the same manner on the subject 
 of the manufacture. The defendant's may be a different 
 manner of manufacturing carburet of manganesej but 
 however manufacturedj if used in the conversion of iron 
 into cast steel, it would be an infringement of the patent." 
 Brie, J.J said : " The question is, was there evidence that 
 the defendant by heating the elements of carburet of 
 manganese with iron formed first the carburet and then 
 cast steel ? If so, there would be a direct infringement." 
 And Wightman, J., said : " The mode adopted by the 
 defendant is not by using chemical equivalents; the 
 material combinations are the same, in both the carburet 
 is formed. The patent is not for the mode of preparing 
 the carburet, but for its use in any process whereby iron 
 is converted into cast steel; the process by which the 
 defendant makes his carburet may be an improvement on 
 that mentioned in the specification, but when made he 
 uses it for the same purpose and the same effect as the 
 defendant." The remaining judges, Coleridge, J., and 
 Alderson, B., while admitting the doctrine of chemical 
 equivalents, held nevertheless that there was not an in- 
 fringement in this case, as although an equivalent had 
 
 (a) 2 Webs. P. R. 236. 
 
INFRINGEMENT. 259 
 
 been used, it was not known at the date of the plaintiff's Chap. xii. 
 patent, and they thought therefore that it constituted a 
 new discovery wholly independent of the specification 
 which omitted it. 
 
 In the House of Lords the following question was put 
 by their lordships to the judges: — "Whether, looking at 
 the record as set forth in the joint appendix to the printed 
 cases, there was evidence for the jury that the plaintiff in 
 error was guilty of an infringement of the patent stated 
 in the declaration, by using oxide of manganese and 
 carbonaceous matter in the manufacture of cast steel, in 
 the manner in which, according to his admission at the 
 trial, he did use them." To this question seven of the 
 judges answered in the affirmative and four in the nega- 
 tive. The House of Lords, nevertheless, reversed the 
 decision of the Exchequer Chamber, and decided that 
 there had been no infringement. Lord Cranworth, L. C, 
 said : " The invention for which the patent was granted 
 was, according to the language of the specification, a 
 mode of ' making an improved quality of steel by intro- 
 ducing into a crucible bars of common blistered steel, 
 along with from one to three per cent, of their weight of 
 carburet of manganese.' It is certain that this process 
 was not adopted by Unwin. He never used such a sub- 
 stance as carburet of manganese at all. And if, therefore, 
 what he did amounted to a violation of the patent, it 
 must be because he used a substance or a combination of 
 substances which in the process of fusion generated 
 carburet of manganese, so that he indirectly, though not 
 directly, used the substance on the use of which the 
 plaintiff's invention was founded. It must, I think, be 
 assumed that in the course of the process adopted by the 
 defendant carburet of manganese in a liquid state was 
 
260 INFRINGEMENT. 
 
 Chap. xk. generated. There was evidence from which the jury- 
 might reasonably infer such to be the case, and if the use 
 of substances thus producing carburet of manganese in a 
 state of fusion was a violation of the plaintiff's patent/ the 
 learned judge at the trial ought not to have told the jury, 
 as he did, that there was no evidence on which they could 
 find a verdict for the plaintiff. 
 
 " But I think that the use of substances thus producing 
 carburet of manganese in a state of fusion, was no viola- 
 tion of the patent. The substance for the use of which 
 {inter alia) the patent was granted was a solid metallic 
 substance, capable of being broken into fragments and 
 weighed, so that certain definite quantities might be put 
 into the crucible with the steel. There is no evidence 
 whatever tending to prove that at the date of the patent 
 it was known to persons acquainted with the subject of 
 manufacturing cast steel, that coal tar and oxide of man- 
 ganese would be chemical equivalents for the carburet of 
 manganese claimed by the plaintiff. Indeed, it is obvi- 
 ous that the discovery of such equivalents was made after 
 the use of the carburet, as a distinct metallic substance, 
 had been some short time in operation. It was itself a 
 most valuable discovery, and would have legitimately 
 formed the subject of a new patent. The costly nature 
 of the substance claimed in the patent might and pro- 
 bably would have prevented its use altogether; and if 
 at the date of the specification it was known to the plain- 
 tiff that, by the use of two common substances, well 
 known in commerce, more than one hundred-fold cheaper 
 than carburet of manganese, the same results precisely 
 would be obtained, as by the use of that material the 
 specification would have been bad as not truly disclosing 
 the invention. 
 
INFRINGEMENT. 261 
 
 "On the short ground, therefore, that the invention Chap. XII. 
 claimed is for the use of a particular metallic substance, 
 namely, carburet of manganese, in certain definite pro- 
 portions, according to the weight of steel under fusion, 
 and that no such substance nor any equivalent for it, 
 known to be such at the date of the specification, was 
 used by the defendant, I think there was no evidence of 
 infringement, so that the ruling of the learned judge at 
 the trial was correct." 
 
 In Hills V. The Liverpool OasUght Co., (a) the plaintiff 
 claimed as his invention "the purifying coal gas from 
 sulphuretted hydrogen, cyanogen, and more or less per- 
 fectly from ammonia, by passing it through the precipi- 
 tated or hydrated oxides of iron from whatever source 
 obtained," and also " repeatedly renovating or re-oxidiz- 
 ing the said purifying materials, by the action of air, 
 whenever they from time to time cease to absorb sulphur- 
 etted hydrogen, so that they may be used over and over 
 again to purify the gas. The defendants used for the 
 purification of their gas a natural product or substance, 
 found in Ireland, and known as " bog-ochre." It was 
 held by Lord Westbury, that the user by the defendants 
 of the bog-ochre employed by them in the purification of 
 gas, so long as the same was used in its native state or 
 condition, was not an infringement of the plaiatiff's 
 patent, but that the user of the same material in the puri- 
 fication of gas, after it had been re-oxidized or renovated 
 by the ''means described in the plaintiff^'s patent, or any 
 other means, was an infringement. 
 
 "Wtere a patent has been taken out for a combination The use of any 
 
 portion of a 
 
 of parts, some of which are new and some old, the use of patent for a 
 (a) 9 Jur. (N. S.) 140. 
 
262 
 
 INFRINGEMENT. 
 
 combination 
 ■which is new 
 is an infi'inge- 
 ment. 
 
 Chap. XII. any part of the combination which is new and material 
 will be an infringement of the patent, though any part 
 which is old may be used, and it is not necessary to 
 show that the whole combination has been imitated, (a) 
 
 In the case of the Electric Telegraph Oo. v. Brett, (b) 
 the breaches in the declaration stated that the defen- 
 dants had used and counterfeited the invention of the 
 patentees. The invention consisted of nine specified 
 improvements, and it was held that the finding of the 
 proof of an infringement, in respect of one of the im- 
 provements, was a sufficient finding of the infringement 
 alleged in the declaration. 
 
 In Sellers v. DicTdnson,{c) the patent was for improve- 
 ments in looms for weaving. The specification was for 
 an improved process for stopping power looms, when the 
 shuttle stopped in the shed, by the combination of 
 mechanism described in the specification. The process 
 comprised two main operations, viz. the shifting of the 
 driving strap from the foot to the loose pulley, and the 
 bringing of the break to the fly wheel. The arrange- 
 ment for shifting the driving strap, by a clutch box and 
 other means, could be distinguished from the arrange- 
 ment for moving the break to the fly-wheel; but the 
 whole combination was specified without any claim or 
 disclaimer as to any part. The clutch box for shifting 
 the strap was old ; the defendant had made a combina- 
 tion for the same purpose, containing two arrangements : 
 that for shifting the driving strap was by a frog' instead 
 of a clutch box, and was not the same as the plaintiff's ; 
 but that for applying the break to the fly-wheel was the 
 
 (a) Gillett v. Wilby, 9 Car. & 
 P. 334 ; 1 Webs. P. R. 270. 
 
 (b) 10 C. B. 882. 
 
 (c) 5 Exoh. 312. 
 
INTEINGEMBNT. 263 
 
 same. The defendant contended that if the plaintiff's Chap. Xll. 
 
 patent was for the whole there was no infringement, and 
 
 if it was for each part the clutch box was old, and so the 
 
 patent was void ; but it was held that the patent was 
 
 valid if the whole combination was new and useful, and 
 
 that the defendant had infringed if he had taken a new 
 
 and material part, that is, the arrangement for bringing 
 
 up the break. 
 
 This case was founded on Newton v. Grand Junction 
 Railway Go. {a) where the patent was for improve- 
 ments in the construction of boxes for axles, and the 
 specification claimed a combination by which boxes cast 
 with fillets were lined, first with a coating of tin, and then 
 of alloy, for the purpose of preventing the abrasion 
 arising in ordinary boxes. The defendant lined boxes 
 with tin without using fiUets or alloy ; but the lining of 
 tin was intended for and effected the purpose to which 
 the plaintiff's patent related; the judge ruled that the 
 jury must take the whole of that for which the patent 
 was granted, fiUets lined with tin and then with alloy, 
 and say whether that was new; that, if a patent was 
 granted for a new combination of several things known 
 before, this did not prevent any one from using what 
 was old ; and that it was for the jury to say whether the 
 part used by the defendant was substantially the same 
 thing as the plaintiff's invention. This direction was held 
 to be right. Sir F. Pollock, C.B., in giving judgment, 
 observed : " It was argued that the same criterion was 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 aU its 
 
 (a) 5 Exch. 331. 
 
264 INFRINGEMENT. 
 
 Chap. Xll. parts Combined together, it answers the purpose by the 
 introduction of any new matter, by any new combination, 
 or by any new application, it is a novelty entitled to a 
 patent. But in considering the question of infringe- 
 ment, aU that is to be looked at is, whether the defendant 
 has pirated apart of that to which the patent applies ; 
 and if he has used that part for the purpose for which the 
 patentee adapted his invention, and that for which he 
 has taken out his patent, and the jury are of opinion that 
 the difference is merely colourable, it is an infringement ;" 
 and Alderson, B., said: "Where the invention consists 
 partly of what is old and partly of what is new, the com- 
 bination is the subject of the patent. Therefore a person 
 cannot infringe that part of the patent which is old, be- 
 cause the pubKo cannot be prevented from using that 
 which they had before used in that state. If the inven- 
 tion 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." 
 
 In Smith v. The London and North- Western Railway 
 Go. (a) Lord Campbell, 0. J., said : " Where a patent 
 is for a combination of two or three or more old inven- 
 tions, a user of any of them would not be an infringe- 
 ment of the patent, but where there is an invention con- 
 sisting of several parts, the imitation or pirating of any 
 part of the invention is an infringement of the patent. 
 Suppose that a man invents a machine consisting of three 
 parts, one of which is a very useful invention, and the 
 two others are found to be of less practical use, surely it 
 could not be said that it was free to any person to use 
 
 (a) 2 El. & Bl. 76. 
 
INFRINGEMENT. 265 
 
 the useful part so long as lie took care to substitute some Chap 
 other mode of carrying out the less useful parts of the . 
 invention." In this case the plaintiff's' invention con- 
 sisted in the manufacture of an improved wheelj " by 
 welding wrought iron bars together into the form of a 
 wheel, whereof the nave, spokes and rim when finished 
 wiU consist of one solid piece of malleable iron." The 
 evidence showed a clear imitation and infringement of 
 the manner of forming the boxes or nave into one piece of 
 malleable iron with the rest of the wheel, but the mode 
 of forming and welding the rim was different, and it was 
 held that as it appeared that the mode of forming the 
 nave was a new and useful part of the invention, the use 
 of it by the defendant was an infringement, although the 
 patentee stated that the new invention consisted in the 
 circumstance of the centre boxes or nave, arms and rim of 
 the said wheel being wholly composed of wrought or 
 malleable iron, " welded into one solid mass in manner 
 hereinbefore described." 
 
 These cases were cited and commented upon in the 
 case of Lister v. Leather, (a) and it was there unanimously 
 decided by the Court of Queen's Bench and in the Ex- 
 chequer Chamber that the use of a subordinate part of a 
 combination might be an infringement of the patent, if 
 the part so used was new, that is to say, new in itself, or 
 in its effect, not merely in its application and mate- 
 rial.(6)~' 
 
 If the defendants have used a material part of the infringed part 
 plaintiff's patent, it is not necessary to determine whether been claimed 
 
 "^ expressly. 
 
 (a) 8 El. & Bl. 1004. White v. Fenn, 15 W. K. 348 ; 
 
 (6) See also Bovill v. Key- McCormick v. Gray, 7 H. & N. 
 worth, 7 Bl. & Bl. 725 ; Thomas 35. 
 V. Foxwell, 5 Jur. (N. S.) 37 ; 
 
266 
 
 INFEINGEMENT. 
 
 Chap. XII. 
 
 Part used must 
 be for the same 
 purpose. 
 
 their claim extends to the rest of the patent, for as the 
 manufacture, which is the result of the process invented 
 and patented, is the ultimate object in view, the pur- 
 pose of the patent laws is to protect all that is new 
 in the process, if it is described, though not expressly 
 -claimed. Thus, where the specification of a patent for 
 "improvements in the manufacture of envelopes" de- 
 scribed 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," it was 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. In the 
 same case the specification of another of the plaintiff's 
 patents for an invention with a similar title described 
 and claimed " the application of gum or cement to the 
 flaps of envelopes by apparatus acting in the manner of 
 surface printing," and it was held that an apparatus for 
 applying the gum might be an infringement although it 
 acted onlv in jp art^ in the manner of surface printing 
 accordiag to the description contained in the specifi- 
 cation, (a) 
 
 But if the patentee's invention consist merely in the 
 use of an old machine or well known tool to work new 
 materials, or to produce a new effect, that is not the 
 subject matter of a patent, and the use of it by another 
 person is not an infringement. (6) 
 
 Not only in order to constitute an infringement, must 
 
 (a) De la Rne T. Dickinson, 
 7 El. & Bl. 738. 
 
 (5) Patent Bottle Envelope 
 
 Co. V. Seymour, 5 C. B. (N. S.) 
 164 ; Finlay v. Allen, 2 Dec. of 
 Ct. of Sess. 2 series, 1087. 
 
INFRINGEMENT. 267 
 
 the part used be new and material, but it must also be Chap. XII. 
 used Jor tiies^me purpose, (a) 
 
 In Newton v. Vaucher(b) the plaintiff's patent was for 
 the application of soft metal to the bearing's of machinery 
 for the purpose of diminishing friction^ and the de- 
 fendant's patent was for the application of soft metal 
 for the purpose of packing hydraulic and other machines, 
 so as to render them air and fluid tight ; and it was held 
 that the principle of the two inventions was totally dif- 
 ferent, and that there had been no infringement. 
 
 In Lister v. Eastwood, (c) Brie, C. J., told the jury that 
 in order to constitute an infringement the defendant must 
 have not only taken a new and material part of the com- 
 bination, but must also have applied it to a purpose 
 similar or analogous to that which the plaintiff's com- 
 bination was intended to effect. It was contended that 
 this was a misdirection, but Williams, J., in delivering 
 the judgment of the Court, said, " We are of opinion that 
 it was not, but that it was a correct exposition of the 
 law. It is true that in the judgment of the Court in 
 Lister v. Leather {d^ this qualification of the doctrine was 
 not superadded in express terms, but it appears to us to 
 flow inevitably from the principles on which that doctrine 
 was founded." 
 
 Where a patent is taken out for a combination of The adaptation 
 
 . . ^ .• 1 -J. -n T_ • n. • of a machine 
 
 machinery for a particular purpose it will be an mtnnge- to another and 
 ment to adopt it to another purpose. In Cannington v. pose'is'an m"-*^' 
 Nuttall(e) Lord Westbury said: "If you are obliged to fi™gement. 
 adopt a combination of machinery which originally is 
 directed to one purpose, before you can make it minister 
 
 (a) Thomas v. Foxwell, 5 (c) 9 L. T. (N. S.) 766. 
 
 Jur. (N. S.) 37. (d) 8 El. & Bl. 1004. 
 
 (J) 6 Exch. 859. («) L. K. 5 H. L. 220. 
 
268 
 
 INFRINGEMENT. 
 
 ClIAI'. XII. 
 
 New combina- 
 tion of old 
 materials for 
 same purpose 
 not infringe- 
 ment. 
 
 to another and additional purpose, the user of it for this 
 additional purpose is an infringement of the patent which 
 first introduced that combination." 
 
 But it is not an infringement of a patent for^a^sfiOlbi- 
 nation to effect a new combination of the same parts for 
 the same purpose, if it ia not a mere colourable imitation 
 or evasion. In OurUs v. Piatt, (a) the plaintiff^s patent, 
 which was granted in 1854, specified a combination of 
 mechanism applicable to spinning mules; and the first 
 claim was for " the novel construction, combination and 
 application of mechanism hereinbefore described, whereby 
 one half of the clutch or catch box hereinbefore described, 
 or any mechanical equivalent therefor, is connected with 
 or acts upon cams or other similar parts of mechanism 
 direct." There were other claims, but in respect of these 
 breaches were not alleged in the plaintiff's particulars of 
 breaches. The defendant's patent, granted in 1860, spe- 
 cified a combination of mechanism which embodied the 
 leading idea of the plaintiff's patent, and by which one 
 half of a clutch box was made to act upon cones direct, 
 and he adopted some of the elements combined by the 
 plaintiff, but he disposed them in a different manner. 
 These were important parts of the prior combination, and, 
 although old mechanical contrivances, were new in respect 
 of the particular mode in which the plaintiff applied them, 
 and the immediate object of their combination by him 
 was new, viz. to make a clutch box act on cams direct. 
 The effect brought about by the direct action of the 
 clutch box on the cams had long previously been pro- 
 duced, but less advantageously, by other contrivances of 
 various kinds. The defendant's mode of combination 
 
 (a) 35 L. J. Ch. 852 ; L. R. 1 H. L. 337. 
 
INFRINGEMENT, 269 
 
 effected the common object of each patent in a more Chap. Xll. 
 beneficial manner than it was or could be effected by the 
 mode of combination specified in the plaintiff's patent, 
 and it displayed an equal amount of inventive ingenuity. 
 It was held that the plaintiff's claim was limited to the 
 entire combination claimed as before described in his spe- 
 cification; that the defendant's combination was not a mere 
 colourable evasion, and that there was no infringement. 
 
 In Hill V. Thompson (a) the patent was for a combina- 
 tion of processes, and it was held that any use made of 
 any of the ingredients singly, or any use made of such 
 ingredients in partial combination, some of them being 
 omitted, or any use of all or some of such ingredients in 
 proportion, essentially different from those specified and 
 yet producing a result equally beneficial with the result 
 obtained by the proportions specified, would not consti- 
 tute an infringement. 
 
 It is not an infringement of a patent which describes Different ma- \ 
 a particular machine, to perform the process by the appli- fom Sme pro- 
 cation of different machiaery. 
 
 Where the particular manner described ia the spe- 
 cification of using the invention was by means of a 
 " weight," and the defendants employed a machine 
 similar ia many respects, but though using weight or 
 pressure occasioned by weight as a force they did not 
 use a " weight," it was held that this did not amount to 
 an infringement ; (b) and where the specification of a 
 patent for improvements in the process of finishing 
 hosiery and other goods manufactured from lambs' 
 wool, Angola and worsted yarns, described the pro- 
 
 («) 8 Taunt. 391 ; 2 B. Moo. (J) Seed v. Higgins, 8 H. L. 
 
 448 ; 1 Webs. P. R. 242. C. 551. 
 
 cess not in- 
 fringement. 
 
270 INFRINGEMENT. 
 
 Chap. XII. cess as Consisting in submitting hosiery and similar 
 goods made of elastic stocking fabric to the finishing 
 process of a press heated by steam^ hot water, or other 
 fluid in the manner thereinafter described, and a drawing 
 of the machine was given, representing an iron steam 
 box supported upon iron columns, beneath which was 
 another box upon which the goods to be pressed were 
 placed, and which was capable of being pressed against 
 the upper one by means of an hydrauHc press, it was 
 held 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. (a) 
 . Patent for ap- Where a patent has been taken out for the application 
 
 plication of a „ • • i j.i t ■ d j.- i j.t 
 
 I principle not 01 a principle, the making oi an article on the same pnn- 
 1 differlnt^appli- °^P^® ^^ *^® patented article will not of itself alone be an 
 1 cation of infrinarement, because the principle may be applied in 
 
 ', principle. o ' r r ^ cir 
 
 1 different ways ; but if it is applied in the same way as in 
 
 \\ the patent, then the want of two or three circumstances, 
 
 • which are contained in the plaintiff's specification, will 
 
 not prevent the plaintiff from recovering, (b) Where the 
 patent was for the application of a self-adjusting leverage 
 to the back and seat of a chair, Alderson, B., told the 
 jury that it was material to consider whether the species 
 of self-adjusting leverage had ever been applied to the 
 back and seat of a chair before. For if there had been 
 a self-adjusting leverage applied before, and the patent 
 had been taken out for the particular mode of accom- 
 plishing it in the patent chair — any one else might have 
 applied the same principle in any other way, and that 
 would have been no infringement ; but if the patent was 
 
 (a) Barber v. Grace, 1 Exch. (Ji) Jones v. Pearce, 1 Webs. 
 
 339. And see Newall v. Elliott, P. R. 122. 
 10 Jur. (N. S.) 956. 
 
INFRINGEMENT. 271 
 
 for the adjustment of a self-acting leverage to the back Chap. Xll. 
 and seat of a chair, it would become a very different 
 question when the question of infringement was consi- 
 dered, (a) 
 
 But if the patentee has not only discovered a mode of Patentee who 
 carrying a principle into effect, but is also the dis- piiucipleas 
 coverer of the principle, he is entitled to protect himself caiTjin^prfn- 
 from all other modes of carrying the same principle into entitled to au' 
 effect. ™o'i«3. 
 
 In Grossley v. Beverley, (&) the patent wag for an im- 
 proved gas-meter, and the infringement complained of 
 was a close imitation of this improved machine; the 
 patentee obtained a verdict, the principle being the same 
 in both cases. In Juj)e v. Pratt, (c) Alderson, B., refer- 
 ring to this case, said : " There never were two things to 
 the eye more different than the plaintiff's invention and 
 what the defendant had done in contravention of his 
 patent right. The plaintiff's invention was different in 
 form, different in construction, it agreed with it only in 
 one thing, and that was by moving in the water a cer- 
 tain point was made to open either before or after, so as 
 to shut up another, and the gas was made to pass through 
 this opening ; passing through it, it was made to revolve 
 it; the scientific men, aU of them, said the moment a 
 practical scientific man has got that principle in his head 
 he can multiply without end the forms in which that 
 principle can be made to operate. The difficulty which 
 wiU press on you, and to which your attention will be 
 called in the present case, is this : 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 
 
 (a) Minfer v. Wells, 1 Webs. (b) 1 Webs. P. K. 106. 
 
 P. R. 130. (c) 1 Webs. P. K. 146. 
 
272 
 
 INFEINGEMENT. 
 
 Chap. XII. 
 
 Acts done on 
 the high seas 
 not infri] 
 ment. 
 
 Tinge- 
 
 Contempo- 
 raneous in- 
 ventor. 
 
 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 
 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." (a) 
 
 In Russell v. Cowley, (b) the plaintiff's patent consisted 
 in the manufacture of tubes, by turning up a piece of plate 
 of iron so that the edges abutted on each other, heating 
 the iron so prepared, and drawing it, when at welding 
 heat, through dies having a conical hole. By this pro- 
 cess, the use of a maundril was avoided. The defendants 
 passed tubes through grooved rollers, and afterwards 
 through a scorpion, which was in effect the plaintiff's die. 
 Evidence was given, which proved that the two inven- 
 tions were similar in principle, and it was held that there 
 had been an infringement of the plaintiff's patent. 
 
 A patent granted for the United Kingdom, Channel 
 Islands, and Isle of Man is not infringed by acts done on 
 the high seas. In Newall v. Elliott, {c) it was held that 
 a patent for an improved method of laying telegraph 
 cables was not infringed by acts done between Malta and 
 Alexandria. 
 
 Where an inventor filed a provisional specification, 
 and obtained within six months letters patent, which were 
 dated as of the date of the provisional specification, and 
 another person had previously made a similar invention, 
 but had not used it for his trade till after the date of the 
 specification being filed, although his invention was com- 
 pleted and might have been used, it was held, that as the 
 
 (a) And see Forsyth v. Riviere, 
 1 Webs. P. R. 97, n. 
 
 (J) 1 Webs. P. R. 462. 
 (c) 10 Jur. (2Sr. S.) 956. 
 
INFEINGEMBNT. 273 
 
 date of the patent is that of filing the provisional specifi- Chap. Xll. 
 cation, there was not such prior user as to invalidate the 
 patentee's right, and therefore that there had been an 
 infringement of hia patent, (a) 
 
 If a person actually makes an article according to the The making for 
 patented process for the purposes of sale, his making it tented arScie 
 win be a sufiacient infringement of the patent, (b) men"t."^''°^*" 
 
 In Qihson v. Brand, {c) Sir N. C. Tindal, C. J., said: 
 "If the defendants have themselves sold an article of 
 exactly the same fabric, made in the same manner as that 
 for which the patent was taken out, such sale may be 
 considered as a using of the invention within the terms 
 of the declaration." {d) 
 
 In Minter v. Williams, (e) it was held that the merely Exhibiting to 
 " exhibiting to sale " imitations of an invention was not 
 any infringement of the patent. 
 
 If the article is made for the purpose of amusement Nor making for 
 
 , n T / j-\ J! • , jij? amusement 
 
 only, or as a model, (/) or tor private use, and not for and not for 
 profit, there is no infringement. ''"' '" 
 
 In Higgs v. Goodwin, [g) the invention consisted in the 
 precipitation of all animal and vegetable matter contained 
 in sewage water by the use of hydrate of lime. The de- 
 fendant applied this process for the purpose of deodorizing 
 sewage water, and did not use the product as an article 
 of value, but bona fide rejected it as being accidentally 
 
 (a) Smith v. Davidson, 19 (d) And see Holmes v. The 
 
 Dec. of Ct. of Sess. 2nd series, London and North Western Rail- 
 
 691. way Co., Macr. 22. 
 
 (6) Jones v. Peareeil Webs. (e) 4 A. & E. 251 ; 1 Webs. 
 
 P. R. 122 ; Muntz v. Foster, 2 P. R. 137. 
 Webs. P. R. 101. (/) Jones v. Pearce, 1 Webs.- 
 
 (c) 4 M. & G. 179 ; 4 Scott P. R. 122. 
 (N. R.) 844 ; 1 Webs. P. R. 630. (jg) El. Bl. & Bl. 529. 
 
274 
 
 INFRINGEMENT. 
 
 Chap. XII. 
 
 Sale in this 
 country of 
 article manu- 
 factured 
 abroad is in- 
 fringement. 
 
 produced and useless, and it was held that there was no 
 evidence of infringement. 
 
 A sale in this country, of an article manufactured 
 abroad, according to the specification of an English 
 patent is an infringement. In Walton v. Lavater, (a) 
 Sir W. Brie, 0. J., said : " The words in the statute of 
 James are ' working or making.' In the granting part 
 of the letters patent the words are, 'make, use, exercise 
 and vend,' and in the prohibitory part, ' make, use, or 
 put in practice.' ... It appears to me to be clearly the 
 intention of the Crown in granting letters patent for a 
 new invention to prohibit and prevent third persons 
 from using the patent article for the purpose of profit 
 by selling. The object is to give to the inventor the 
 profit of his invention ; and the most effectual way of 
 defeating that object would be the permitting others to 
 derive from the sale of the patent article the profit which 
 it was intended to secure to the patentee. It seems to 
 me, therefore, that proof, that a party has sold the patent 
 article without proof of his having made it or procured 
 it to be made, would be good evidence to warrant a jury in 
 finding that he Las been guilty of an infringement. As to 
 the circumstance of the goods having been imported from 
 abroad, I should say, that if this were simply the case of 
 an importation without any proof of knowledge on the 
 part of the importer, that the article imported was a 
 patented article, the mere sale would be sufiBcient to 
 charge him." And in ElmsUe v. Boursier, (6) Sir W. M. 
 James, V.C, said : " I am of opinion both upon prin- 
 ciple and upon the authorities that the doing what is 
 admitted to have been done by these defendants is a 
 
 (a) 8 C. B. (N. S.) 162. 
 
 (6) L. R. 9 Eq. 222. 
 
INFRINGEMENT. 275 
 
 violation of the rights granted to the plaintiff by the Chap. xil. 
 letters patent. 
 
 " The plaintiff has by a lawful grant from the Crown 
 under the statute obtained the right to 'make, use, 
 exercise and vend' his invention within the United 
 Kingdom, in such manner as he thinks fit ; and the right 
 to have and enjoy 'the whole profit, benefit, commodity 
 and advantage' accruing and arising by reason of the 
 said invention. 
 
 " Now one of the most useful inventions is that of a 
 process by which a common article may be made more 
 economically than it was made before. 
 
 " It is said that tin-foil can be made by the plaintiff's 
 process at less cost than by the old method ; and it is 
 conceded that nobody in England can use the plaintiff's 
 process of making cast tin-foil as distinguished from 
 rolled tin-foil without a licence from the plaintiff. If 
 that cannot be done in England it would be a very 
 strange thing if a person in England could send an order 
 to some one in France, get the same thing manufactured 
 there in exactly the same way, and bring it here so as 
 to compete with the person to whom the Crown has 
 granted ' the whole profit, benefit, commodity and 
 advantage' arising from the patent. It would be a 
 short mode of [ destroying every ' profit, benefit, com- 
 modity and advantage,' which a patentee could have 
 from such a thing if all that a man had to do was to get 
 the thing made abroad, import it into this country, and 
 then sell it here in competition with the English 
 patentee." (a) 
 
 Where the patented article is made abroad and is The sending to 
 
 ^ England of 
 
 patented arti- 
 
 (a) And see Wright v. Hitchcock, L. R. 5 Exch. 37. 
 
276 
 
 INFRINGEMENT. 
 
 Chap. XII. 
 
 broad is in- 
 fringement, 
 though no sale. 
 
 Manufacture 
 for exportation 
 is infringe- 
 ment. 
 
 Improvement 
 on existing 
 
 J latent not in- / 
 ringement. / 
 
 Delay in using 
 invention no 
 
 Experiments 
 ■with known 
 articles not 
 infringement. 
 
 there applied to the purposes for which it is made, and 
 is then sent to this country not for sale here, but for 
 exportation to another country, there is nevertheless 
 such a user of the patent here as to constitute an in- 
 fringement. Thus, where the patent was for capsules 
 which were made abroad according to an English patent 
 and the bottles they were used to cover were sent 
 through England for exportation, it was held that there 
 was an infringement of the patent, (a) 
 
 If the parts of a patented machine are old, it is not 
 an infringement to manufacture them separately and 
 export them. But the manufacture and exportation of 
 the complete machine will be an infringement. (&) 
 / A 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, but the use 
 of the improvement with the former invention during 
 the existence of the former patent without licence is an 
 infringement, (c) 
 
 It appears that if an invention, for which a patent is 
 granted, would, if put into practice, be useful, an action 
 for infringement may be brought, although the plain- 
 tiff's invention has never been put into actual use, ex- 
 cept by the defendant when he infringed the patent, {d) 
 
 When it is known that a mixture of certain articles 
 will produce a beneficial result, and a patent is taken out 
 for mixing them in certain proportions, it is not an in- 
 fringement for another person to make experiments for 
 
 (a) Betts V. Neilson, L. E. 3 
 Ch. 429 ; S. C. on app. Neilson 
 V. Betts, L. K. 1 H. L. 1. 
 
 (J) Gaucher v. Clayton, 11 
 Jur. (N. S.) 462. 
 
 (c) Lister v. Leather, 8 El. & 
 Bl. 1017. 
 
 (d) Macnamara v. Hulse, Car. 
 & M. 471. 
 
INFRINGEMENT. 277 
 
 ascertaining what the proportions or properties of the Chap. xil. 
 different articles would come to. (a) ' 
 
 It is no answer to an action for infringement or a suit Acta done by 
 
 workmen may j 
 
 to restrain the infringement of a patent, to say that any be infringe- / 
 infringement which may have taken place was contrary ' / 
 
 to the orders of the defendant, and that the acts were 
 done by workmen employed by him in the course of 
 their duties, but against his orders. (6) 
 
 Ignorance of the existence of a previous patent is no ignorance of 
 
 existing patent 
 
 answer to a charge of infringement. If the defendant's no excuse, 
 patent is capable of being accurately represented as an 
 imitation of the plaintiff's, it wiU be an infringement, 
 although at the time of making his invention the defen- 
 dant was innocent of any knowledge of the plaintiff's 
 patent, (c) 
 
 It has been seen that the Court of Exchequer, in intention im- 
 Seath V. JJnwin, {d) considered that if the defendant did 
 not intend to imitate the plaintiff's invention, there was 
 no infringement. This doctrine was dissented from in 
 Stevens v. Keating ;{e) and when Heath v. JJnwin came 
 before Sir L. Shadwell, V. C, his Honour said : " The ' 
 party complaining of the act is none the less prejudiced 
 by it, because it was committed unintentionally; and 
 my opinion is that if a party has done an act that 
 ia injurious to the rights of another (though without 
 any intention of doing him an injury) , he is answerable ; 
 for the consequences." (/) The action is maintainable 
 
 (a) Muntz V. Foster, 2 Webs. v. Hitchcock, L. R. 5 Exch. 
 
 P. K. 101. 37. 
 
 (J) Betta V. De Vitre, L. R. (<0 2 Webs. P. R. 227. 
 
 3 Ch. 441. (e) 2 Webs. P. K. 175. 
 
 (c) Curtis V. Piatt, 11 L. T. (/) Heath v. Unwin, 15 Sim. 
 
 (N. S.) 245 ; Nunn y. D'At- 552 ; Unwin v. Heath, 5 H. L. 
 
 bergae, 34 Beav. 595 ; Wright C. 535. 
 
278 INFRINGEMENT. 
 
 Chap. XII. in respect of what the defendant does, not what he 
 
 intends, {a) 
 Patentee enti- A patentee is entitled to a verdict with nominal dam- 
 though no loss ages, even though he has sustained no real injury, if his 
 whereTn- rights have been invaded. Thus, where an action was 
 frmgement. brought against a person for selling hones wrapped in 
 envelopes similar to those of the plaintiff's, and the jury- 
 found that the defendant's hones were not inferior to 
 those of the plaintiff, and it was not proved that the 
 plaintiff had suffered any specific damages, it was held 
 that as his right had been invaded, he was entitled to 
 recover nominal damages, (b) 
 Proof of patent The Patent Law Amendment Act,(c) after directing a 
 
 documents. -i n i n l a ■ -I 
 
 seal to be made for the purposes of the Act, provides 
 " that all Courts, judges and other persons whomsoever 
 shall take notice of such seal, and receive impressions 
 thereof in evidence, in like manner as impressions of the 
 great seal are received in evidence ; and shall also take 
 notice of, and receive in evidence, without further proof 
 or production of the originals, all copies or extracts certi- 
 fied under the seal of the said office of or from documents 
 deposited in such office." A later Act (d) provides 
 " that printed or manuscript copies or extracts, certified 
 and sealed with the seal of the commissioners, of letters 
 patent, specifications, disclaimers, memoranda of altera- 
 tions, and all other documents recorded and filed in the 
 Commissioners' office, or in the office of the Court of 
 Chancery, appointed for the filing of specifications, shall be 
 received in evidence in all proceedings relating to letters 
 
 (a) Stead v. Anderson, 4 C. B. (c) 15 & 16 Vict. c. 83, s. 2. 
 833 ; 2 Webs. P. R. 156. (rf) 16 & 17 Vict. c. 115, s. 4. 
 
 (b) Blofield V. Payne, 4 B. & 
 Ad. 410. 
 
INFRINGEMENT. 279 
 
 patent for inventions in all courts whatsoever within the Chap. xii. 
 United Kingdom of Great Britain and Ireland, the Chan- 
 nel Islands, and Isle of Man, and Her Majesty's colonies 
 and plantations abroad, without further proof or produc- 
 tion of the original." (a) 
 
 The specification of the plaintiff's and defendant's Two specifica- 
 patents must be compared, in order to see whether there compared, 
 is that variation in substance that will give the denomi- 
 nation of a new discovery to what the defendant has done, 
 or whether he is 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. (&) 
 
 It is not proof of an infringement that identical terms 
 are used in different specifications, the things described 
 may be different ; it must be proved that they are them- 
 selves identical, and are used for the same purpose, (c) 
 
 The question as to whether or not there has been an The question 
 infringement of the plaintiff's patent is a mere question ment is for the 
 of fact, and peculiarly for the consideration of the jury ; ^'"^^' 
 and it is for them to say whether, under the circum- 
 stances, that which has been done by the defendants 
 amounts to such an infringement or not, (d) even though 
 there is no question with respect to whether the defend- 
 ant has or has not used the particular machine or process 
 which is alleged to be an infringement, (e) Where, in 
 an action for infringing a patent for blocks for pavement, 
 
 (a) As to proof of transcripts P. ' R. 427. And see ante, p. 
 
 in Scotland and Ireland, see 16 114. 
 
 & 17 Vict. c. 115, s. 5, and ante, (d) Walton v. Potter, 1 "Webs, 
 
 ch. vii. P- R- 586. 
 
 (6) Walton V. Potter, 1 Webs. (e) De la Bue v. Dickinson, 
 
 P. R. 587. 7 El. & Bl. 738 ; Lister v. 
 
 (c) Cutler's Patent, 1 Webs. Leather, 8 El. & Bl. 1004. 
 
280 
 
 INFRINGEMENT, 
 
 Chap. XII. 
 
 ETidenoe in 
 support of 
 patent. 
 
 Patent is prima 
 facie eyiaence 
 of noTelty of 
 invention. 
 
 the plaintifiF 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 defen- 
 dant's blocks were equivalent to one of the plaintiff's, it 
 was held that it was for the jury to say whether the defen- 
 dant's blocks were in effect the same as the plaintiff s, 
 although no single block of the defendant's was bevelled 
 both inwards and outwards on the same side, (a) 
 
 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 given against evidence. (6) 
 
 The plaintiff in an action for infringement must give 
 some evidence to show what his invention is, unless the 
 other side admit that it has been tried and succeeds, (c) 
 It is a sufficient test of the sufficiency of the specifica- 
 tion that witnesses state that they have been able to 
 make the patented article from the description given in 
 the specification j and that no person has been called who 
 has stated that he could not understand it, has been 
 misled by it or incurred expense in endeavouring to work 
 according to it. (d) 
 
 The patent is prima facie evidence that the invention 
 
 in respect of which it is taken out is new. 
 
 The 
 
 plaintiff," said Alderson, B., " 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 
 
 (a) Macnamara v. Hvlse, Car. 
 & M. 471 ; 2 "Webs. P. R. 128. 
 
 (6) Sellers v. Dickinson, 5 
 Exch. 323. 
 
 (c) Turner v. Winter, 1 T. R. 
 
 607; 1 Webs. P. R. 81. And 
 see Bateman v. Gray, 1 C. L. R. 
 512. 
 
 (d) Cornish v. Keene, 1 Webs. 
 P. R. 502. 
 
INFRINGEMENT. 281 
 
 workman could make the machine which would answer Chap. Xll. 
 
 the purpose which the patent was intended to accomplish. 
 
 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 circumstances whereby that right, which 
 
 otherwise would be presumed to exist, is defeated, to 
 
 show that the Crown's grant has been improperly obtained 
 
 by the present plaintifi"." (a) 
 
 Where the alleged piracy has taken place abroad, it is 
 the duty of the defendant to give evidence of a negative 
 character to prove (in answer to the prima facie case 
 made by the plaintiff) , that the process used is different 
 from that which has been patented. (6) 
 
 ^ Where defence is set up that the patent is void on 
 account of publication in a previous specification, evidence 
 of all that has been done in the trade to which the 
 patent relates, between the date of the two patents, is 
 admissible, (c) 
 
 The plaintiff's witnesses can only give negative evid- Plaintiff's wit- 
 ence, and it is for the defendant to show affirmatively that giTe^negatiTe^ 
 the invention is not n&w.{d) 
 
 In Manton v. Manton (e) Gibbs, C. J., said : " The first 
 witness, a man of considerable 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 
 
 (a) Minier v. Wells, 1 Webs. (c) Neilson v. Betts, L. R. 5 
 
 P. K. 129. And see Bussell v. H. L. 1. 
 
 Crichton, ib. 677 n. ; 15 Dec. of (d) Galloway v. Bleaden, 1 
 
 Ct. of Sess. 1271. Webs. P. R. 526. 
 
 (6) Neilson v. Betts, L. R. 5 (e) Dav. P. C. 350. 
 
 H. L. 1. 
 
 evidence. 
 
282 INFRINGEMENT. 
 
 Chap. xii. proving that they never saw it before would be of no avail 
 if one was called who had seen it and practised it." (a) 
 Validity of The Court will assume for the purpose of inquiry, 
 
 sumed.*^ whether the defendant has infringed the patent or not, 
 
 that it is valid, and that no objection arises either to the 
 nature of the grantor the specification. (6) 
 Sale of similar '' It is prima fade evidence of infringement that an 
 denceofin- ,/ article has been made according to the patentee's pro- 
 ingement. ^ i ^^^^^ -when it is seen to agree in all respects with that 
 manufactured and sold by the patentee. 
 
 In Muddart v. Grimshaw, (c) the plaintiff's patent was for 
 " a new mode of making great Cables and other cordage, 
 so as to attain a greater degree of strength therein, by a 
 more equal distribution of the strain upon the yams." 
 Pieces of cordage made by the defendant were put into 
 the hands of the plaintiff's witnesses, and from the fact 
 that the same effect was produced in them, and from the 
 similarity of structure, they gave the opinion that they 
 were made by the same process as the plaintiffs. Lord 
 Ellenborough said that it had happened to him in the 
 same morning to give, as far as he was concerned, his 
 consent to the granting of three different patents for the 
 same thing ; but the modes of attaining it were aU 
 different. But it did not follow that the plaintiff's 
 method of attaining the object was open to the public ; 
 and therefore the question for the jury was, whether the 
 defendant had used the plaintiff's method or some 
 other, {d) 
 
 (a) And see Hill r. Thompson, (c) I Webs. P. R. 91. 
 
 8 Taunt. 375 ; 2 B. Moo. 448 ; (d) See also Oalloway v. 
 
 1 Webs. P. R. 244. Bleaden, ib. 523 ; Davenport t. 
 
 (6) Muntz V. Foster, 2 Webs. Richard, 3 L. T. (N. S.) 503. 
 P. R. 97. 
 
INFRINGEMENT. 283 
 
 Where it was proved that the defendant sold an article Ckap. xil. 
 in the state to which it would have been brought by the 
 plaintiff's process, and that he had the means of practis- 
 ing the plaintiff's process at hand, it was held that that 
 was sufficient evidence of infringement, (a) 
 
 Where the patent is for the mode of manufacturing a Unless patent 
 certain article and not for the article itself, evidence must manufacture. 
 be brought to prove that the defendant uses the same 
 process as the plaintiff, and the production of an article 
 made by the defendant which is similar to that made by 
 the plaintiff is not evidence of infringement. Thus 
 where the patent was for a mode of manufacturing candles 
 by the application of peculiarly formed wicks, and the 
 mode of manufacturing candles by the application of two 
 or more plaited wicks as described in the specification, it 
 was held that the production of candle with a plaited 
 wick, without showing in what way it was made, was not 
 evidence of infringement. (6) But where the alleged 
 infringements took place abroad and the defendant did 
 not bring negative evidence to prove that his process was 
 different from the plaintiff's, and positive evidence was 
 given on the part of the plaintiff by one workman, that 
 he had been employed at the foreign manufactory, and 
 there saw articles manufactured by a process not distin- 
 guishable from the patented process; it was held that 
 these circumstances warranted the conclusion of identity 
 of material and process, and were sufficient warrant for 
 the grant of an injunction, (c) 
 
 Where in a patent for "improvements in apparatus Use of similar 
 
 article. 
 
 (a) Hall V. Boot, 1 Webs. (c) Neilson v. Betts, L. R. 5 
 
 P. R. 101. H. L. 1. 
 
 (6) Palmer v. Wagstaff, 9 
 Exch. 494. 
 
284 
 
 INFRINGEMENT. 
 
 Chap. XII. 
 
 Evidence of 
 motives for 
 prior user in- 
 admissible. 
 
 Patentee who 
 has assigned 
 may be wit- 
 ness. 
 
 employed for laying down submarine electric telegraph 
 wires," the invention consisted in coiling the wire or 
 cable round a cone, and in the supports placed cylindri- 
 cally outside the coil round the cone ; it was held, that 
 the substitution by the defendants of a cylinder having 
 a domed or hemispherical top, for a cone with a conoidal 
 apex in the plaintiff's apparatus — both the plaintiff's and 
 the defendant's apparatus being used for the same purpose 
 and in nearly the same manner, was evidence and strong 
 evidence of infringement, (a) 
 
 Where evidence of prior user by some third party is 
 attempted to be shown, the declaration of such party as 
 to his motives for such user are inadmissible as mere 
 hearsay. (6) 
 
 A patentee who has assigned the whole of his interest 
 in a patent may be examined as a witness in an action by 
 the assignees for infringement, (c) 
 
 The Court looks with distrust on experiments conducted 
 with a view to litigation, (d) 
 
 (a) Re Newall and Elliott, 4 
 C. B. (N. S.) 293. 
 
 (b) Hyde v. Palmer, 3 B. & 
 S. 657. 
 
 (c) Bloxam v. Elsee, 1 C. & 
 P. 563. 
 
 (d) Young v. Femie, 4 Giff. 
 577. 
 
CHAPTER XIII. 
 
 OF AN ACTION FOR INFRINGEMENT. 
 
 ' I "HE injury wHcli a patentee sustains by the infringe- Chap. XIIT. 
 
 -•- ment of his patent entitles him to maintain an 
 action at law against the wrongdoer, to recover com- 
 pensation for the damage he has sustained, (a.) 
 
 In an action to recover damages for the infringement Pai-ties. 
 of a patent, the proper person to be plaintiff is the party 
 in whom the legal estate in the patent was vested at the 
 time of the infringement, and the person who has directly 
 or indirectly committed or authorized the alleged wrongful 
 act must be the defendant. (&) 
 
 The assignee of a patent may maintain an action for Assignee may 
 
 . T sue. 
 
 infringement, (c) and if a patentee has assigned part of 
 his patent he may join with his assignee ia bringing an 
 action. {(^) 
 
 The assignee of a separate and distinct part of a patent 
 may sue for an infringement of that part without joining 
 
 (a) Bull, N. P. 76. As the dents in Heading," and to 
 
 rules of pleading are so soon to Fisher's "Common Law Digest," 
 
 be altered under the Judicature for a collection of the cases. 
 
 Act, it has not been thought (6) Hindm. 251. 
 
 advisable to increase the size of (c) The Electric Telegraph 
 
 this work by any notes on the Co. v. Brett, 10 C. B. (N. S.) 
 
 subject of pleading. The reader 838. 
 
 is referred to BuUen and Leake (d) Boulton v. Bull, 2 H. Bl. 
 
 " On Pleading," Chitty's " Prece- 464. 
 
286 ACTION FOB INFRINGEMENT. 
 
 Chap. xih. any person who has an interest in another part, and the 
 damages will accrue to him alone. In Dwinicliff v. 
 Mallett, (a) Sir W. Brie, C. J., said : " The question is 
 whether an assignment of part of a patent is valid. I am 
 inclined 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 distiact 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 natvu-e may be severed by the assignment of a part, 
 I see no reason for holding that the assignee of a separate 
 part which is the subject of infringement may not main- 
 tain an action. Then are the assignees bringing an action 
 for an injury done solely to them by an infringement of 
 that, part of which is thus vested in them alone, liable to 
 be defeated because they have not joined the assignees of 
 other parts of the patent who have no manner of in- 
 terest in the damages sought to be recovered in such 
 action ? I see no reason why the action should be defeated 
 on any such ground ; I see no reason why the plaintiffs 
 should be put to the trouble and expense of applying for 
 leave to use the names of the other parties, or for com- 
 pelling them by means of a judge's order to permit their 
 names to be used upon an indemnity where no practical 
 advantage whatever is to be gained by it, the injury being 
 to the assignees of part only, and the damages to be 
 recovered being theirs only." 
 Even where When a person becomes the assignee of two several 
 
 original" '^ moities of a patent he is entitled to sue for an infringe- 
 grantee. ment of the patent although the defendant is the original 
 
 (a) 7 C. B. (N. S.) 209. 
 
ACTION FOB INFEINGEMENT. 287 
 
 (J.A 
 
 grantee. In Walton v. Lavater{a) it was argued that diAP. xill. i 
 the efifect of an aasignment was only to give the assignee 
 a licence to use the patent and a right to an accountj and 
 that the original patent right remained in the grantee ; 
 but it was held, following Bunnicliffy. Mall6tt,{b) that an 
 assignee, whether of the entirety of a patent or of a part 
 or share in it, takes the legal interest, and is not to be 
 considered merely as a licensee, (c) 
 
 Where two persons are assignees of a patent as tenants Tenants in ' 
 in common, if one of them dies, actions for infringements descends to 
 commenced in his lifetime descend to the survivor, who is '""''^°'- 
 entitled at law to recover the whole of the damages, (c?) 
 
 The assignees of a bankrupt patentee may maintain an Assignee of 
 action for infringement of the patent, (e) *° ™^ ' 
 
 A mere licensee cannot sue for the infringement of the Licensee can- 
 patent, (/) but an exclusive licensee has a right to sue in exclusive, 
 the name of the patentee, (g) 
 
 An action may be maintained although there has been 
 no infringement since the defendant has received notice 
 that the entire interest in the patent has become vested 
 in the assignee. Qi) 
 
 By 5 & 6 Will. IV. c. 83, s. 5, it was provided that in Notice of ob- 
 
 . jeotionsatlaw. 
 
 actions for infringement and m any sci. fa. that notice of 
 objections should be given. This enactment was repealed 
 by s, 41 of the Patent Law Amendment Act, (i) which 
 
 (a) 8 C. B. (N. S.) 162. (/) Berosnev.Fairie.lWeha. 
 
 (b) 7 C. B. (N. S.) 209. P. K. 154. 
 
 (c) And see Wallington v. (g-) Renard v. Levinstein, 2 H. 
 Bale, 7 Exch. 888. & M. 628. 
 
 (d) Smith 'f. London and North Qi) Walton T. Lavater, 8 C. 
 Western Railway Co., 2 El. & B. (N. S.) 162. 
 
 Bl. 69. (0 15 & 16 Vict. c. 83. 
 
 (e) Bloxam i. Elsee, 6 B. & 
 C. 169. 
 
288 
 
 ACTION FOB INFRINGEMENT. 
 
 Chap. XIII. 
 
 In actions for 
 infringement 
 of letters patent 
 particulars to 
 be delivered, 
 and no evi- 
 dence allowed 
 not mentioned 
 therein. 
 
 Particulars of 
 breaches. 
 
 provides that "in any action in any of her Majesty's 
 superior Courts of record at Westminster or in Dublin, 
 for the infringement of letters patent, the plaintiflF shall 
 deliver with his declaration particulars of the breaches 
 complained of in the said action, and the defendant on 
 pleading thereto shall deliver with his pleas particulars of 
 any objections on which he means to rely at the trial in 
 support of the pleas in the said action ; and at the trial of 
 such action no evidence shall be allowed to be given in 
 support of any alleged infringement or of any objection 
 impeaching the validity of such letters patent which shall 
 not be contained in the particulars delivered as aforesaid ; 
 provided always that the place or places at or in which 
 and in what manner the invention is alleged to have been 
 used or published prior to the date of the letters patent 
 shall be stated in such particulars. Provided also, that 
 it shall and may be lawful for any judge at chambers to 
 allow such plaintiff or defendant to amend the particulars 
 delivered as aforesaid upon such terms aa to such judge 
 shall seem fit. 
 
 The plaintiff's particulars of breaches cannot be called 
 in aid of the defective particulars of objections, (a.) 
 
 Where in an action for the infringement of a patent for 
 " improvements in obtaining pictures or representations 
 of objects " the plaintiff delivered the following particu- 
 lars of breaches-^-" that the defendant on the 1st of August, 
 1863, and on divers days between that day and the com- 
 mencement of this suit, at No. 65, Oxford Street, in the 
 county of Middlesex, infringed the plaintiff's patent by 
 making, using and selling pictures and portraits made and 
 executed according to the plaintiff's invention in the said 
 
 (a) Palmer v. Cooper, 9 Exch. 231. 
 
ACTION FOR INFEINGEMENT. 289 
 
 patent, otherwiae than in relation to the parts disclaimed, Cfiap. XIII. 
 and also infringed the said patent by making, using and 
 selling pictures and portraits whereby the plaintiff's said 
 invention was counterfeited, imitated and resembled," the 
 Court refused to compel him to specify particularly the 
 persons and occasions, and the particular parts of the 
 specification alleged to have been infringed, (a) 
 
 The requirements of the statute as to the notices by Particulars of 
 the defendant are clearly confined to notices affecting the gi'ect of. ' 
 validity of the patent only, and a defendant therefore may 
 object to the validity of an assignment although the ob- 
 jection has not been specified in the notice of objections 
 delivered by him. (6) 
 
 The statute does not make the notice of objections May not go 
 
 . beyond pleas. 
 
 stand m the place oi pleas, and the defendant cannot by 
 his notice of objection go beyond his pleas, (c) 
 
 The object of the statute in requiring the defendant to Object of 
 
 statute. 
 
 deliver particulars of objections was to enable the plaintiff ; 
 to know what objections he had to meet; and the particu- 
 lars must be precise and definite. It is not sufficient to 
 say that if any part of the invention is new the same is 
 useless, but the defendant must point out what part ; or 
 to say that the improvements, or some of them, have been 
 used before : the defendant must point out which, (d) 
 
 Where the defendant pleaded that the nature of the 
 invention and the manner in which the same was to be 
 performed were not particularly ascertained and described 
 in the specification, and that the invention was not new, 
 
 (a) Talbot v. Za Roche, 15 (c) Macnamara v. Hulse, Car. 
 
 C. B. 310. & M. 471. 
 
 (6) Chollety. Hoffman,1 El. (d) Fishery. Bewick, AWng. 
 
 & Bl. 686. (N. C.) 706 •, 6 Scott, 687 ; 1 
 
 Webs. P. R. 264. 
 
290 
 
 ACTION rOE INFRINGEMENT. 
 
 Chap. XIII. and the particulars of objections stated that the specifica- 
 tion did not describe the nature of the invention and the 
 manner in which it was to be performed and that the in- 
 vention was not new and was either wholly or in part used 
 and made public before the obtaining of the letters patent, 
 it was held that the first of the objections was sufficientj 
 but that the second was bad and ought to have pointed 
 out what portions of the alleged invention were previously 
 in use. (a) 
 
 An objection that the defendant did not state the best 
 ; , mode with which he was acquainted is sufficient. (6) 
 / 1 Books intended to be relied on must be distinctly de- 
 / scribed, (c) 
 
 The notice of objections is intended to give the plaintiff 
 more information than the plea, (c?) and it is no answer 
 to a motion for better notice that the notice is as specific 
 as the plea.(e) Where a defendant pleaded that the 
 patentee was not the true ^d first invent or and that the 
 invention was not, when the letters patent were granted, a 
 new invention, it was held that he was not bound to state 
 who was the first inventor nor under what circumstances 
 the invention had been previously used.(/) 
 
 In Leafy. Topliam{g) the defendant delivered a notice 
 of objections, one of which stated that the patentee did 
 
 Notice of ob- 
 jections is to 
 give plaintiff 
 more informa- 
 tion than plea, 
 
 (a) Heath v. Unwin, 10 M. & 
 W. 684. 
 
 (i) Jones v. Berger, 5 M. & 
 Gr. 208 ; 1 Webs. P. R. 544. 
 
 (c) Ih. 
 
 (d) Neilson v. Harford, 8 M. 
 & W. 806 ; 1 Webs. P. R. 370 ; 
 Jones T. Berger, 5 M. & Gr. 
 208 ; 1 Webs. P. R. 544 ; Bttl- 
 
 nois V. Mackenzie, 4 Bing. (N. 
 C.) 127 ; 1 Webs. P. R. 260. 
 
 (e) Betts V. Walker, 14 Q. B. 
 363. 
 
 (/) Russell Y.Ledsam, II M. 
 & W. 647 ; Heath v. Unwin, 10 ib. 
 684; Bulnoisr.Mackenzie,4Timg. 
 (N. C.) 127 ; I Webs. P. R.260. 
 
 (g) 14 M. & W. 146. 
 
ACTION FOR INFRINGEMENT. 291 
 
 not by Ms specification sufiiciently describe tbe nature of Chap. Xlil. 
 
 the supposed invention ; and the other stated that he had 
 
 not caused any specification sufficiently describing the 
 
 nature of the supposed invention to be enrolled. ^ It was 
 
 held that the last objection was not sufficiently precise ; 
 
 and an amendment was ordered by inserting .the word 
 
 "other" before "specification." 
 
 A notice of objections stated that the invention was 
 known to certain persons (naming them) and others 
 before the date of the patent. The Court refused to 
 strike out the words "and others." (a) 
 
 The notices of objection delivered by the defendant Not conclu- 
 are not conclusive at his peril, but the Court has power to 
 order a further and fuller notice. (6) Where the defend- 
 ant pleaded that the grant of letters patent was obtained 
 by fraud and misrepresentation, it was held that he ought 
 to state in his notice of objections what the fraud and 
 misrepresentation was. (c) 
 
 Where the defendant relies on a general user of the 
 invention, it is sufficient to state in the particulars of ob- 
 jection that the invention was used by manufacturers 
 * ■ generally at a particular place without naming any person 
 or specifying any manufactory. If he relies on a specified 
 user by certain persons named, proof of user by any one 
 of the persons named will support his objection, (d) If / 
 the place or places are not named, the defendant will not / 
 be allowed to give evidence of the user, (e) 
 
 (a) Bentley v. Keighley, 7 M. (c) Russell v. Ledsam, 1 1 M. 
 
 & Gr. 652. & W. 647. 
 
 (V) Bulnois V. Mackenzie, 4 (d) Palmer v. Wagstaff", 8 
 
 Bing. (N. C.) 127 ; 1 Webs. P. Excli. 840. 
 
 R. 260 ; Perry v. Mitchell, 1 (e) Palmer v. Cooper, 9 Exch. 
 
 Webs. P. R. 269 ; Electric Tele- 213. 
 graph Co. v. Nott, 4 C. B. 462. 
 
292 
 
 ACTION FOR INFRINGEMENT. 
 
 Chap. XIII. If the plaintiff thinks that the notice of objection does 
 Further notice. ^°^ sufficiently raise the point on which the defendant 
 intends to rely, his course is to apply to a judge at 
 chambers for an order for the delivery of a more specific 
 notice, and 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, (a) 
 
 If the evidence is within the literal meaning of the 
 words of the particulars, however general the statement, 
 it will be received at the trial. Thus where the particulars 
 stated that the invention had been generally known and 
 publicly used in corn mills for many years previously, 
 evidence that the invention had been in use before 
 the date of the patent in mills in Cheshire was ad- 
 mitted. (&) 
 
 It is no ground for refusing to answer interrogatories 
 under s. 51 of the Common Law Procedure Act, 1854, 
 when the defendant admits the infringement; that the 
 defendant's customers may be liable to actions for 
 infringement, (c) Wbere the cause of action arose more 
 than six years before the action was commenced, the . 
 Court refused to allow the plaintiff to administer interro- 
 gatories before declaration, {d) 
 
 In an action by a patentee against a licensee, the 
 
 Discovery. declaration stated that the plaintiff obtained a patent for 
 
 an improved roving machine, and had covenanted to 
 
 17 & 18 Vict, 
 c. 125, s. 51. 
 Interroga- 
 tories. 
 
 (a) Neilson v. Harford, 8 M. 
 & W. 806 ; 1 Webs. P. R. 331 ; 
 Hull T. Bollard, 1 H. & N. 134. 
 
 (S) Hull V. Bollard, 1 H. & 
 N. 134. 
 
 643. As to the form and extent 
 of interrogatories whicii may be 
 exhibited to a defendant before 
 plea, see Thomas v. Tillie, 17 
 Ir. C. L. R. 783. 
 
 (c) Tetley v. Ea.iton,\S C. B. (rf) Jbneiv.Pra«,6H.&N.697. 
 
ACTION FOE INFRINGEMENT. 293 
 
 grant a licence on certain terms to the defendant, he Chjh'. XI J I. 
 paying so much for each machine made with the plain- 
 tiff's invention, and covenanting to keep a true account 
 .of and pay for all the machines he made with the plain- 
 tifiPs invention applied ; and that he would not during 
 the continuance of the licence, make or vend machines, 
 without the invention of the plaintiff. Breaches first 
 that the defendant did not pay the sums due for licences, 
 and secondly, that he made and sold machines without 
 the plaintifPs invention being applied; The defendant, 
 in answer to the interrogatories, stated that he had made 
 and sold 1,200 machines, to which the plaintiff's inven- 
 tion had not been applied, but declared that he could 
 not give any information as to the persons to whom he 
 had sold them ; and that he could not give any further 
 information about them. The defendant, however, gave 
 the addresses of the persons to whom he had sold the 
 machines with the invention, but alleged that he could 
 give no further information about them without dis- 
 closing 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 ; it was held that the defendant was entitled to 
 such particulars as should describe those portions of the 
 machines to which the plaintiff contended that his inven- 
 tion had been applied, so as to enable the defendant to 
 understand as far as possible the nature of the machine 
 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 insufficient to enable the plaintiff to 
 furnish the particulars ; for if the answers were insuffi- 
 
294 
 
 ACTION FOB INFEINGBMENT. 
 
 Chap. XIII. 
 
 Inspection. 
 
 Affidavit 
 must be clear 
 and precise. 
 
 When appli- 
 cation may be 
 made. 
 
 Inspection 
 not matter of 
 course. 
 
 cient, they should have been objected to. But the plain- 
 tiff was allowed to inspect the machines on the premises 
 of the defendant, and also to examine him vivct voce: {a) 
 
 By 15 & 16 Vict. c. 83, s. 42, it is provided that in ^ 
 any action, in any of the superior Courts of record at 
 Westminster for the infringement of letters patent, it 
 shall be lawful for the Court in which such action is 
 pending, if the Court is then sitting, or if it is not then 
 sitting, for a judge of such Court, on the application of 
 the plaintiff or defendant respectively, to make such order 
 for an inspection, and to give such direction respecting 
 such action and inspection, and the proceedings therein, 
 as to such Court or judge may seem fit. 
 
 The affidavit in support of an application for an order 
 under this section must be clear and precise. Where in 
 an action for the infringement of a patent for numbering 
 and paging books, it was sworn in the affidavit " that the 
 machiue used by the defendants for paging and number- 
 ing their books is the same for which the plaintiff has 
 obtained a patent," it was held that the affidavit was too 
 vague and defective, and that it ought to have stated at 
 least that there was such a machine, and that the plaintiff 
 ■' had reason to believe it was an infringement. (&) 
 
 There is no limitation in the Act as to the time when 
 the application is to be made, the enactment is general 
 and applicable whenever an action is pending ; an appli- 
 cation therefore made before the delivery of the declara- 
 tion is not premature. But an order for inspection will 
 not be granted as of course, and the applicant must show 
 that it is material and really wanted for the purposes of 
 
 id) Jones v. Lee, 25 L. J. 
 
 Exch.) 241. 
 
 (J) Shaw V. The Bank of 
 England, 22 L. J. Exch. 26. 
 
ACTION POR INB'EINGEMENT. 295 
 
 the cause, (a) The inspection mentioned in the statute Chap. XI 11. 
 is an inspection of the instruments or machinery manu- 
 factured by the parties with a view to evidence of 
 infringement, and does not refer to an inspection of booksj 
 which is provided for by another Act of Parliament, (b) 
 The Court will not compel the defendant to grant an 
 inspection of hia books, under 14 and 15 Vict. c. 99, 
 s. 6, unless a prima facie legal right is established by the 
 plaintiff, and it is not enough for the plaintiff to show 
 that he has been injured, and that there is a possibility 
 of his discovering the amount of injury that he has 
 suffered, if he is allowed to examine the books, (c) 
 
 An order will not be made, if the defendant positively 
 swears that he does not use the plaintiff's invention, and 
 the plaintiff does not swear that the invention is used. 
 Thus in an action for the infringement of a patent for a 
 mode of making veneers or mouldings, an order was 
 refused, as it was doubtful on the plaintiff's affidavit 
 whether the patent was for the kind of veneering, or for 
 the process by which it was done; and the defendant 
 positively swore that he used no machinery in his 
 process, (d) 
 
 In The Patent Type Founding Co. v. Walter, (e) 
 an application to the Court of Exchequer for leave to 
 inspect, and if necessary to take specimens of type, 
 alleged to be made according to the plaintiff's patent, 
 for the purpose of analysis, was refused. The plaintiffs 
 
 (a) Amies v. Kelsey, 22 L. J. (c) Smith v. The Great West- 
 on B. 84. em Railway Co., 3 W. E. 69. 
 
 (6) Vidi V. Smitli, 3 El. & Bl. {d) Meadows v. Kirhman, 29 
 
 974. And see Smitli v. The L. J. Exch. 205. 
 Great Western Railway Co., 3 (e) 5 H. & N. 192. 
 
 W. K. 69. 
 
296 
 
 ACTION FOR INFRINGEMENT. 
 
 Chap. XIII. 
 
 Injunction. 
 
 Rule for in- 
 junction is 
 rule to show 
 cause only in 
 first instance. 
 
 Costs. 
 
 thereupon filed a bill against the defendant, and an order 
 was made for him to deliver a sample of type to the 
 plaintiffs for analysis, (a) Where the defendants refused 
 to produce their books before the Master for the purpose 
 of taking an account^ on the ground that they were 
 about to appeal, an order was nevertheless made for 
 production and inspection of the books. (6) 
 
 By 15 & 16 Vict. c. 83, s. 42, it is provided that in 
 any action in any of the superior Courts of record at 
 Westminster for the infringement of letters patent, it 
 shall be lawful for the Court in which such action is 
 pending, if the Court be then sitting, or if the Court be 
 not sitting, then for a judge of such Court, on the appli- 
 cation of the plaintiff or defendant respectively, to make 
 such order for an injunction, and to give such direc- 
 tion, respecting such injunction and the proceedings 
 therein respectively, as to such Court or judge may 
 seem fit. 
 
 A rule for a writ of injunction to restrain a defendant 
 from infringing a patent is a rule to show cause only in 
 the first instance, (c) 
 
 It is provided, by 5 & 6 Will. IV. c. 83, s. 6, that in 
 any action for infringing the right granted by. letters 
 patent, in taxing the costs thereof, regard shall be had 
 to the part of such case which has been proved at the 
 trial, which shall be certified by the judge before whom 
 the same shaU be had, and the costs of each part of the 
 case shall be given according aa each party has succeeded 
 or failed therein, regard being had to the notice of objec- 
 tions as well as the counts in the declaration, and without 
 
 (a) S. C. Johns. 727, 
 (J) Saxby v. Easterhrooh, L. 
 E. 7 Exoh. 207. 
 
 (c) Gittins V. Symes, 15 C. B. 
 362, a case wliicli was decided 
 under 17 & 18 Vict. c. 125, s. 82. 
 
ACTION FOR INFRINGEMENT. 297 
 
 regard to the general result of the trial. And by the Chap, xill 
 Patent Law Amendment Act, (a) it is provided that, in 
 taxing the costs of any action in any • of the superior 
 Courts at Westminster, for infringing letters patent, regard 
 shall be had to the particulars delivered in such action j 
 and the plaintiff and defendant respectively shall not be 
 allowed any costs in respect of any particular, unless cer- 
 tified by the judge before whom the trial was had to have 
 been proved by such plaintiff or defendant respectively, 
 without regard to the general costs of the cause, and that 
 it shall be lawful for the judge before whom any such 
 action shall be tried to certify that the validity of the 
 letters patent in the declaration mentioned came in ques- 
 tion; and the record with such certificate being given 
 in evidence in any suit or action for infringing the said 
 letters patent, or in any proceeding by scire facias to 
 repeal the letters patent, shall entitle the plaintiff in any 
 such suit or action, or the defendant in such proceeding 
 by scire facias on obtaining a decree, decretal order, or 
 final judgment, to his full costs, charges, and expenses, 
 taxed as between attorney and client, unless the judge 
 making such decree or order, or the judge trying such 
 action or, proceeding, shall certify that the plaintiff or de- 
 fendant respectively ought not to have such full costs. 
 This section virtually repeals section 3 of 5 & 6 Will. IV. 
 c. 83. 
 
 Where the defendant obtained a verdict on a plea 
 which went to the whole action, it was held that he was 
 entitled to the general costs of the cause, deducting the 
 costs of the objections on which the plaintiff succeeded 
 and of the issues found for him. (&) 
 
 (a) 15 & 16 Vict. c. 83, s. 43. (b) Lo^h v. Hague, 5 M. & W. 387. 
 
298 ACTION FOK INFRINGEMENT. 
 
 CiiAp. XIII. The defendant will not be entitled to the costs of his 
 
 Judge's cer- particulars of objections^ even in the case of a non-suit, 
 tificate. ^f ^jjg jndge has not certified that thoy have been proved. 
 
 ''These particulars," said Parke, B., "and the costs with 
 respect to them, are wholly the creatures of this Act of 
 Parliament ; and the Act makes the judge's certificate a 
 condition precedent to the recovery of such costs from the 
 opposing party." (a) 
 
 The certificate should be as to the determination of 
 each objection, of which notice has been given, and not 
 as to the issues. (&) 
 
 Where the defendant pleaded that the invention was 
 not new and a verdict was given for the plaintiff, it was 
 held that the validity of the patent might be considered 
 to have come in question under the plea, so as to entitle 
 the plaintiff to a certificate to that effect under 5 and 6 
 Will. IV. c. 83, s. 3. (c) 
 
 The judge has no power to grant a certificate after 
 taxation, (d) 
 
 If the defendant at the trial consents to. a verdict for 
 the plaintiff, without any evidence being given to prove 
 the validity of the patent, the judge will not certify that 
 the validity of the patent came in question before him, as 
 the certificate would affect third parties ; and it would be 
 possible for two parties by collusion to consent to a ver- 
 dict in favour of a patent, and to use the certificate after- 
 wards to the injury of another party who was really con- 
 testing the validity of the patent, (e) 
 
 (a) Honiball y. Bloomer, 10 (d) Gillett v. Green, 7 M. & 
 
 Exch. 538. W. 347. 
 
 (/;) Losh, V. Hague, 5 M. & (e) Stacker v. Bodgers, I 0. 
 
 W. 387. & K. 99. 
 
 (c) Gillett V. Wilby, 9 C. & 
 P. 334. 
 
ACTION FOE INFEINGEMENT. 299 
 
 Where an action was brought to recover damages for Chap. XIII. 
 an alleged infringement^ and a compromise was made 
 upon terms embodied in an order of nisi prius, and a yer- 
 dict was by agreement entered into for 40s. and costSj 
 " with all usual certificates,^' and the judge indorsed and 
 signed on the record a certificate that the record in an- 
 other case in which the validity of the letters patent had 
 come in question, and the certificate had been given in 
 evidence before him, it was held that the certificate was 
 improperly granted, the record and certificate in the 
 former action not having been given in evidence, and it 
 not being, under the tjircumstances, a " usual certificate " 
 within the contemplation of the parties, (a) 
 
 If a plaintiff gives notice of trial, which ia afterwards Trial aban- 
 abandoned, the defendant is entitled to the costs of pre- of particulars. 
 paring the particulars of objection and the evidence in 
 support of them, as the statute applies only to cases 
 where there has been a trial ; where there has been no 
 trial, the law stands as it did before. (&) 
 
 Where the defendant applied for .time to plead, which 
 was granted upon the terms that he should take short 
 notice of trial, and that the cause might be set down for 
 trial before issue joiaed, in order that the case might be 
 tried at the next sittings, and the pleas were afterwards 
 delivered, and on the application of the plaintiff a special 
 jury was nominated but not struck, and the action was 
 abandoned without joinder of issue or notice of trial, it 
 was held that the master was right in disallowing the 
 defendant's costs of preparing for the trial, (c) 
 
 (a) Bovill V. Hadley, 17 C. B. ties Bailway Co., 1 El. & El. 961. 
 (N. S.) 435. (c) Curtis v. Plati, 10 Jur. 
 
 (J) Greaves v. Eastern Coun- (N. S.) 823. i; 
 
300 
 
 ACTION FOE INFEINGEMENT. 
 
 ClIAP. XIII. 
 
 Account. 
 
 Power of court. 
 
 Reti'ospecth e 
 account. 
 
 If a cause has not been tried, the defendant is not 
 entitled, under 6 Geo. IV. c. 50, s. 34, to the costs of a 
 special jury, for which he has applied, (a) 
 
 The Court may, upon the application of the plaintiflf 
 or defendant respectively, make such order for an 
 account, and give such directions respecting such ac- 
 count and the proceedings therein as the Court may 
 think fit. (6) 
 
 The meaning of the legislature was to vest in the 
 Courts of Common Law in which actions for the in- 
 fringement of patent rights might be brought the power 
 to order an injunction, inspection and account previously 
 exclusively exercised by Courts of Equity ; so that suitors 
 might be saved the vexation, delay, and expense to 
 which they had before been exposed. The Court may 
 grant either an interlocutory order, an account of all 
 articles sold during the action, or after verdict for the 
 plaintiff and as part of the final judgment, an account of 
 all profits made by the defendant since the commence- 
 ment of the action,, and after notice that an account 
 would be required. But the Court has no power where 
 damages nominal or substantial have been recovered to 
 order an account of profits made by the defendant prior 
 to the commencement of the action, the damages assessed 
 by the jury being considered as the compensation for 
 the loss of such profits, (c) 
 
 No retrospective account can be granted before final 
 judgment, but the Court has authority to order the de- 
 fendant pending the action to keep an account of aU the 
 articles that he sells made upon the principle alleged to 
 
 (a) Greaves v. Eastern Coun- 
 ties Railway Co., 1 El. & El.' 
 
 901. 
 
 (4) 15 & 16 Vict. c. 83, s. 42. 
 (c) Holland v. Fox, 3 El. & 
 Bl. 983. 
 
ACTION FOR INFEINGEMENT. 301 
 
 be an infringement of the plaintiff's patent, and of the Chap. XIII. 
 profits arising therefrom until further order of the Court ; 
 on condition of the plaintiff agreeing to waive all claim 
 to recover more than nominal damages at the trial of 
 the action, and on condition that in case the verdict and 
 judgment in the action shall be in favour of the de- 
 fendant he will pay to him the expense of keeping such 
 account, (a) 
 
 Reasonable evidence of the validity of the patent and 
 of its having been infringed must be given. (6) 
 
 As there can be no order for an account of profits 
 until final judgment, any prior account ordered to be 
 kept of sales pending the action can only be ancillary to 
 this account of profits ; the interim account of sales be- 
 coming nugatory if there should be a verdict and judg- 
 ment for the defendant, (c) 
 
 An account will be granted as soon as the verdict is 
 given, and the defendant cannot refuse to allow his 
 books to be inspected for the purpose of taking an 
 account on the ground that he is about to appeal. (cZ) 
 Where the patentee has obtained a verdict, an account 
 will be ordered of all pirated goods made and sold by 
 the defendant, and of the number he has in stock, and he 
 will be ordered to pay over the price received for the 
 articles sold and the value of those remaining in stock, (e) 
 
 If a person adopts a part only of a patentee's in- | 
 vention he will be liable to account. (/ ) | 
 
 (a) Vidi V. Smith, 3 El. & Bl. (e) Holland v. Fox, 23 L. J. 
 
 969. (6) n. Q. B. 211. 
 
 (c) Holland v. Fex, 3 El. & (/) Trotman v. Wood, 16 C. 
 Bl. 985. B. (N. S.) 479. 
 
 (d) Saxhy v. Easterhrook, L. 
 R. 7 Exch. 207. 
 
302 ACTION FOE INFRINGEMENT. 
 
 Chap. xiit. The account will be for all profits that the defendant 
 has made by selling the patented article, not of aU profits 
 of which the plaintifi" has been depriyed by the in- 
 fringement, (a) 
 
 (a) Elwood T. Christy, 18 C. Fox, 3 E. & B. 977 ; Walton v. 
 B. (N. S.) 494. For form of Lavater, 8 C. B. (N. S.) 191. 
 rule or order, see Holland v. 
 
T 
 
 CHAPTER XIV. 
 
 or A SUIT IN EQUITY. 
 
 HE jurisdiction of tlie Court of Chancery in respect Chap. XIV. 
 of patents is founded upon the assumption of the jur" diction of 
 leffal rights of the patentee to the exclusive use of the ^^ ^™''' °^ 
 
 . , Chancery. 
 
 invention comprised in his letters patent ; and the Court 
 exercises great latitude and discretion in dealing with 
 any application made to it. (a) 
 
 If the patentee is unable to support his patent on a 
 trial to ascertain its validity^ a bill to restrain the in- 
 fringement of the patent cannot be supported, (b) 
 
 It must be remembered that the Court now has the \ 
 power of determining questions of law or fact, (c) ^ 
 
 It was said at one time that if the title was not clear at Injunction 
 law the Court would not grant an injunction, till the though title not 
 title was ascertained, but in the case of The Universities ^^^{^ ™^ ^ 
 of Oxford and Gambridge v. Bichardson, (d) Lord Bldon 
 refused to- accede to that proposition, and said : " There 
 are many instances within 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 the party gets his patent and puts his invention 
 
 (a) Bacon v. Jones, 4 M. & (c) See post, Trial of ques- 
 
 Cr. 436. tions of law or fact. 
 
 (6) Calcraft v. West, 2 J. & (d) 6 Vcs. 707. 
 
 Lat. 123. 
 
304 SUIT m EQUITY. 
 
 Chap. XIV. j into execution and has proceeded to a sale that may be 
 
 Possession 
 under colour 
 of title. 
 
 (. 
 
 I called possession under it^ however doubtfal it may be 
 whether the patent can be sustained; this Court has 
 I lately said possession under colour of title is enough to 
 \ enjoin and continue the injunction until it shall be proved 
 at law that it is only colour of title and not real title." 
 Course of pro- On an application for an injunction the Court has the 
 application for power to grant the injunction without more ; this course 
 injunction. however will not be taken when the defendant questions 
 the validity of the patent, but the Court will either grant 
 an injunction and direct the plaintiff to establish his legal 
 title, or will require him to establish his legal title and 
 suspend the grant of the injunction until that investiga- 
 tion is completed, the defendant in the meantime keeping 
 an account, (a) In Bridson v. M' Alpine, (b) Lord Lang- 
 dale, M.E., said: "When an injunction is asked to 
 restrain the infringement of a patent, the Court has 
 occasion to consider, first the validity of the patent, and 
 secondly the fact of the infringement. Where these'" 
 two facts are established, it is within the power as it is 
 the duty of the Court to grant the injunction. It de- 
 pends on the degree of doubt which exists on these 
 questions whether the Court will grant the interim in- 
 junction. In such cases it will cautiously consider the 
 degree of convenience or inconvenience to the. parties by 
 granting or not granting the injunction. These things 
 are to be carefully considered; the right between the 
 parties is a legal right, and being a legal right, the Court 
 in cases where the matter is doubtful, is naturally anxious 
 to obtain the decision of the Court of Law where the 
 
 (a) Bacon v. Jones, 4 M. & (J) 8 Bear. 231. 
 
 Cr. 436 ; Hill v. Thompson, 3 
 Mer. 626. 
 
 ) 
 
 /. 
 
SUIT IN EQUITY. 305 
 
 matter is properly cognizable, before it interferes to pre- Chap. XIV. 
 vent a party exercising his prima facie right. According 
 to the doubt which may exist in the mind of the Court 
 upon the facts and according to the degree of inconve- 
 nience 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 the terms of the party 
 undertaking to keep an account, or it may direct the 
 motion to stand over, on the terms of the plaintiff pro- 
 ceeding to a trial at law. Where it has been determined 
 that the plaintiff must first establish 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 the 
 Court will not interfere until the legal right has been 
 determined at law. I must, however, qualify this by 
 saying that in cases of overwhelming mischief, the Court 
 has authority to interfere at any time." 
 
 In certain cases an injunction if improperly granted injunction not 
 might cause infinitely more mischief to the defendant itle"ascer- "^ 
 than the delay in granting it would cause to the plaintiff, to defendait''^ 
 as where the defendant's works are very extensive, and Sf^^**- 
 in such a case the legal right must be proved beyond 
 all possibility of doubt before an injunction will be 
 granted, (a) 
 '\ The Court will not as a general rule grant an injunc- 
 
 (a) Neilson v. Forman, 2 Neilson v, Thompson, 1 Webs, 
 Coop. C. 0. 61, n. S. 0. nom. P. R. 278, 
 
 X 
 
306 SUIT IN EQUITY. 
 
 Chap. XIV. tion unless satisfiedj the legal right being disputed, that 
 in the result, such legal right would be established, or 
 the legal right not being disputed that the acts com- 
 plained of are an infringement, (a) 
 Injunction Where the plaintiff has had uninterrupted enjoyment 
 
 mi^errmited* of his patent, the court will not look into the title, but 
 enjoyment. ^^ ^^^^ Credit to it, and will continue an injunction to 
 restrain infringement until it has been shown that the 
 title is bad. (6) 
 
 In Michs v. Ramcoc'k,{c) a demurrer to a bill, on the 
 ground that the plaintiff had not estabHshed his title at 
 law, was overruled. 
 
 , In Hill V. Thompson, (d) Lord Bldon said : " Where a 
 / patent has been granted, and an exclusive possession of 
 I some duration under it, the Court will interpose its in- 
 ly junction without putting the party previously to esta- 
 ■ blish the validity of his patent by an action at law. But 
 where the patent is but of yesterday, and upon an appli- 
 cation being made for an injunction, it is endeavoured to 
 be shown in opposition to it that there is no good speci- 
 fication, or otherwise that the patent ought not to have 
 been granted, the Court will not from its own notions 
 respecting the matter in dispute act upon the presumed 
 validity or invalidity of the patent without the right 
 having been ascertained by a previous trial, but will send 
 the patentee to law and oblige him to establish the 
 
 (a) The Electric Telegraph 140 ; Harmer v. Plane, 14 Ves. 
 
 Co. V. Nott ; 2 Coop. C. C. 48 ; 13U ; Bickford v. Shewes, 4 M. 
 
 Wood V. Cockrell, ib. 58, n. ; & Or. 500. 
 
 Jones V. Pearce, ib. 1 Webs. (c) 2 Dick. 647. 
 
 P. R. 122 ; Renard y. Levin- (rf) 3 Mer. 622 ; 1 Webs. V. 
 
 stein, 2 H. & M. 628. R. 236. 
 
 (V) Boulton v. Bull, Z\ Ves. 
 
SUIT IN EQUITY. 307 
 
 validity of his patent in a court of law before it will grant Chap. XIV. 
 him the benefit of an injunction." 
 
 In Caldwell v. VanvKssingen,{a) Sir G-. Turner, V.O., 
 said : " It is part of the duty of this Court to protect pro- 
 perty pending litigation j but when it is called upon to 
 exercise that duty, the Court requires some proof of title 
 in the person who calls for interference. In the case 
 of a new patent, this proof is wanting : the public whose 
 interests are affected by the patent have had no opportu- 
 nity of contesting the validity of the patentee's title, and 
 the Court therefore refuses to interfere until his right 
 has been established at law. But in a case where there 
 has been long enjoyment under the patent (the enjoy- 
 ment of course including use) the public have had the N^ " 
 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." (6) 
 
 The Court will not on any suggested defect in the 
 specification allow the patentee's privilege to be disturbed 
 until the title has been decided, (c) 
 
 Where a legal right exists the Court cannot refuse to 
 interfere for its protection upon grounds which depend 
 exclusively upon considerations of national policy, (ci) 
 
 A patentee does not lose his title by exclusive en- 
 joyment because he has omitted to proceed by scire 
 
 (a) 9 Hare, 424. Curtis v. Cutis, 2 Coop. C. C. 60, n. 
 
 (J) See also Stevens v. Keat- (c) Muntz v. Foster, 2 Webs. 
 
 ing, 2 Ph. 335 ; Newall v. Wilson, P. R. 95. 
 
 2 D. M. Gr. 291; Bovill v. (d) Caldwellv.Vanvlissingen, 
 
 Goodier, L. E. '2 Eq. 200 ; 9 Hare, 215. 
 
308 SUIT m EQUITY. 
 
 Chap. xiv. faoias to set aside a subsequent patent extending to part 
 of his invention^ unless such subsequent patent is put 
 ;''in practice, (a) If the patentee has not only proved en- 
 joyment under the patent^ but has also successfully 
 j maintained actions at law against infringerSj the Court 
 I 1 will at once grant an injunctioUj unless there are suffi- 
 \ I cient grounds for withholding its interference. (6) 
 
 V An allegation which is not denied that the defendant's"^ 
 circumstances are such as to render it improbable that 
 he would be able to meet the pecuniary demands to 
 which he would be liable if unsuccessful in establishing 
 his alleged legal right, is an additional reason for granting 
 an injunction under such circumstances, (c) If however it 
 appears from the nature of the invention, or from the 
 conflicting evidence as to its novelty, that the validity 
 of the patent is doubtful, or if the evidence of exclusive 
 possession is not satisfactory, an injunction will not be 
 granted although the patent is of long standing, {d) 
 Injunction Where the plaintiff has been directed to ascertain the 
 
 a er rer lot. yaJidity of the patent and has obtained a verdict, an in- 
 junction will be granted almost as a matter of course, (e) 
 and where a motion that the verdict should be set aside 
 and a nonsuit entered had failed. Lord Lyndhurst said 
 that it was a matter of course that the injunction should 
 issue till the hearing. (/) 
 
 (a) Newall v. Wilson, 2 D. (d) CoUard v. Allison, 4 M. 
 
 M. G. 290. & Cr. 487. 
 
 (V) Caldwell v. Vanvlissingen, (e) Neilson v. Harford, 1 
 
 9 Hare, 425 ; Davenport v. Gold- Webs. P. R. 373. 
 herg, 2 H. & M. 282; Bovill v. (J) Russell y. Com)%, 2 Coop. 
 
 Goodier, L. R. 2 Eq. 200. C. C. 59, n. 
 
 (c) Newall v. Wilson, 19 L. T. 
 (N. S.) 161. 
 
SUIT IN EQUITY. 309 
 
 If a trial has been directed the result of which is not Chap. XIV. 
 conclusive as to the right of the patentee, he must pro- 
 ceed again to prove his right, but no terms will be im- 
 posed on him, and the Court may grant an injunction at 
 once, as more evil may be done to the plaintiflfs by de- 
 laying the injunction than to the defendants by granting 
 it, even if the patent afterwards turns out to be bad. (a) 
 
 If after an injunction has been granted upon the Terms, 
 terms of the plaintiff's ascertaining his legal right, he 
 does not proceed to trial, the injunction wiU be dis- 
 solved, (b) 
 
 Where the plaintiff is assignee of the patent the Court Assignee. 
 may on directing a trial instead of granting an injunc- 
 tion, order the defendant to admit the plaintiff's title to 
 the patent, (c) but where the plaintiff is merely equitable 
 assignee no admissions will be required. (cZ) 
 
 Before an injunction will be granted a iair prima facie Infringement 
 
 mustbe shown. 
 
 case of infringement must be proved, even though the 
 validity of the patent is not denied ; and where the evi- 
 dence on the question of infringement is conflicting, an 
 injunction will not be granted until it has been ascertained 
 by a trial that the acts complained of amount to an in- 
 fringement of the patent, (e) 
 
 Where the alleged acts of piracy have taken place 
 
 (a) Boulton v. Bull, 3 Ves. (d) Pidding v. Franks, 1 Mac. 
 
 140 ; Neilson v. Harford, 1 & G. 56. 
 
 "Webs. P. R. 373 ; Bridson v. (e) Hill v. Thompson, 3 Mer. 
 
 Benecke, 12 Beav. 7 ; Lister v. 626 ; 1 Webs. P. R. 236 ; Brid- 
 
 Leather, 3 Jur. (N. S.) 433 ; son v. McAlpine, 8 Beav. 230 ; 
 
 Baxter v. Combe, 3 Jr. Ch. 245. The Electric Telegraph Co. v. 
 
 (S) Bickford v. Skewes, 4 M. Nott, 2 Coop. C. C. 41 ; Caldwell 
 
 & Cr. 501. V. Vanvlissingen, 9 Hare, 424. 
 
 (c) Morgan v. Seaward, 1 
 Webs. P. R. 169. 
 
310 SUIT IN EQUITY. 
 
 Chap. XIV. abroad it becomes the duty of the defendant to give evi- 
 dence of a negative character to prove (in answer to the 
 prima facie case made by the patentee) that his process 
 is different from that which has been patented, and where 
 such negative evidence was not given by the defendant, 
 but positive evidence on behalf of the patentee was given 
 by a workman employed in the foreign manufactory that 
 the processes were identical, it was held that there was 
 sufficient evidence to warrant the grant of an injunc- 
 tion, [a) 
 
 The length of time for which the patentee has had ex- 
 clusive enjoyment will influence the Court in granting an 
 injunction where there is b, prima facie case of infringe- 
 ment. (6) 
 
 If the patented article is made abroad, and is sent to 
 this country for shipment to foreign customers, there will 
 be such a user of the invention as to entitle the patentee 
 to an injunction, (c) 
 
 It is no answer to a motion for an injunction that the 
 defendant has volunteered to keep an account ;(ci) nor 
 that he has promised not to repeat the infringement, (e) 
 
 Where the Court is of opinion that the plaintiff is en- 
 titled to a decree at once, the final order will not be de- 
 layed pending an appeal, (f) 
 Two patents. Where two parties have obtained patents for the same 
 
 invention the Court will not interfere to prevent either of 
 
 (a) Neilson v. Betts, L. B. 5 (d) Benard v. Levinstein, 2 
 
 H. L. 1. H. & M. 628. 
 
 (J) Davenport v. Richard, 3 (e) Losh v. Hague, 1 Webs. 
 
 L. T. (ISr. S.) 503. P. R. 200 ; Oeary v. Norton, 
 
 (c) Betts V. Neilson, L. R. 8 1 De G. & S. 9. 
 
 Ch. 429 ; Neilson v. Betts, L. R. (/) Penn v. BMy, L. R. 3 
 
 5 H. L. 1. Eq. 308. 
 
SUIT IN EQUITY. 311 
 
 them from doing what he has a right to do by the act of Chap. XIV 
 the Crown, but will leave them to try their legal right by 
 scire facias, {a) 
 
 The conduct or admissions of the defendant may be /Admissions of 
 such as to show that he has admitted the validity of the/; ^^^ *°*" 
 patent. Thus where the plaintiff and defendant had 
 worked the patent as partners under circumstances which 
 afforded a presumption that, during the continuance of 
 the partnership the defendant had not disputed that the 
 patent was valid, the Court, upon an interlocutory appli- 
 cation for an injunction, assumed that the patent was 
 valid ) (&) and where the defendant had not contested the 
 validity of the patent when the plaintiff had raised the 
 question in a previous suit of which the defendant had 
 knowledge, it was held that the conduct of the defendant 
 entitled the plaintiff to an injunction until the validity of 
 the patent could be ascertained, (c) 
 
 In Dudgeon v. Thompson {d) the plaintiff in the year 
 1872 commenced proceedings against the defendant in 
 Scotland, and the Lord Ordinary granted an interdict 
 which was afforded by the Court of Session in 1873. On 
 an application for an injunction. Sir G. Jessel, M. E., 
 said : " 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 
 
 (a) Copeland v. Wehh, 11 W. (c) J5efts v. Menzies, 3 Jur. 
 
 R. 134. See also Basket v. (N. S.) 357. 
 Cunningham, 2 Eden, 137. (rf) 30 L. T. (N. S.) 244. 
 
 (6) Muntz V. Orenfell, 2 
 Coop. C. C. 61, n. 
 
312 SUIT IN EQUITY. 
 
 Chap. XIV. enable the Court to say, that, as against the defendant 
 himself, there is no reason to doubt the validity of the 
 patent." 
 
 Injunction If the patent is new, and if it has not acquired the 
 
 may be gTanted . „ . n /-i , mi it 
 
 though patent sanction of enjoyment, the Court will as a rule, nowever 
 plain the case may be, exercise its own judgment upon 
 the subject until the plaintiff has established his legal 
 title, (a) 
 
 But the Court has power to grant an injunction to re- 
 strain the infringement of a recent patent without re- 
 quiring the patentee to establish his right, if it appears 
 that such a course will do justice between the parties. (6) 
 
 Where an action has been brought to establish the 
 validity of a patent, and it has been referred to arbitra- 
 tion, the award of the arbitrator will be considered as 
 equivalent to a verdict establishing the validity of the 
 patent against which there has been no motion for a new 
 trial, (c) 
 
 Where the award is that the patent is not illegal the 
 defendant in a subsequent suit between the same parties 
 is not estopped from disputing the validity of the patent, {d] 
 Injunction not An injunction will not be granted after the patentee 
 frial ordered, has been directed to ascertain his right by a trial until 
 the title is fully decided. Thus ; after the patentee had 
 obtained a verdict in an action; an application to revive 
 
 (a) Hill V. Thompson, 3 Mer. bent, 2 Jur. (N. S.) 1041 ; Clark 
 
 626 ; 1 Webs. P. R. 236 ; Cald- v. Ferguson, 1 Giff. 184 ; Benard 
 
 well V. Vanvlissingen, 9 Hare, v. Levinstein, 10 L. T. (N. S.) 
 
 424. 176. 
 
 (J) Bacon v. Jones, 4 M. & (c) Lister v. Eastwood, 26 L. 
 
 Cr. 436 ; The Electric Tele- T. 4. 
 
 graph Co. v. Nott, 2 Coop. (d) Newall v. Elliott, 9 Jur. 
 
 C. C. 49 ; Gardner v. Broad- (N. S.) 359. 
 
SUIT IN EQUITY. 313 
 
 an injunction was ordered to stand over until tlie result Chap. XIV. 
 of a motion for a new trialj wHcli tlie defendant intended 
 to make, should be known, (a) 
 
 The plaintiff is not precluded from asking for an in- Injunction at 
 junction at the hearing, by the fact of his not having ap- 
 plied for it on an interlocutory motion ; he must show his 
 title clearly, 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. (6) ■ ' Generally speaking/' said Lord Cottenham, 
 " a plaintiff who brings his cause to a hearing is expected 
 to bring it on in such a state as will enable the Court to 
 adjudicate upon it, and not in a state in which the only 
 course open is to suspend any adjudication until the party 
 has had an opportunity of establishing his title by pro- 
 ceedings before another tribunal." (c) 
 
 An injunction will not be made perpetual until the 
 validity of the patent has been conclusively established, (d) 
 
 A patentee who discovers that his patent is being in- Delay and ac- 
 fringed must proceed to assert his rights at once, and ''^'®^°®°''^' 
 where there has been delay, an injunction will not be 
 granted until the plaintiff has proved his title, even though 
 the Court is in his favour, on the question of the validity 
 of the patent. 
 
 But he will have some time allowed him for the purpose 
 of making inquiries. Thus where the plaintiff received 
 
 (a) Hill V. Thompson, 3 Mer. (c) Bacon v. Jones, 4 M. & 
 
 631 ; 1 "Webs. P. R. 238 ; Col- Or. 437. And see Patent Type 
 
 lard V. Allison, 4 M. & Cr. 487 ; Founding Co. v. Walter, Johns. 
 
 Bridson v. M' Alpine, 8 Beav. 731. 
 
 229. (d) milr.I!vans,4DeG.¥. 
 
 (6) Bacon v. Spottiswoode, 1 & J. 288 ; 8 Jur. (N. S.) 525. 
 Beav. 382. 
 
314 ' SUIT IN EQUITY. 
 
 Chap. XIV.. notice that his patent was being infringed on the 23rd of 
 March, and inquiries were made and some correspondence 
 took place between the parties, and the bill was not filed 
 I till the 7th of July, it was held that there had not been 
 such delay as to deprive the plaintiff of his right to an 
 injunction, (a) But where the plaintiff knew of the 
 alleged infringement in August, 1835, and did not apply 
 for an injunction till the year 1839, the Court refused 
 either to grant the injunction or to retain the bill ; 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 intermediate period. Is a 
 defendant to be subject to this annoyance without any 
 absolute necessity or even any proportionate advantage 
 of his adversary, and without that adversary being able 
 to show any reason why he did not apply at an earlier 
 time ? It appears to me that it would be very injurious 
 to sanction such a practice, more especially when I can 
 find no case in which the Court has thought it right to 
 retain a bill simply for the purpose of enabling a plaintiff 
 to do that which this plaintiff might have done at any 
 time within the last four years." (&) And where the 
 plaintiffs delayed making their application for a year, the 
 injunction was refused. Lord Langdale saying : " 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 
 
 (a) Losh T. Hague, 1 Webs. (6) Bacon v. Jones^ 4 M, & 
 
 P. R. 201. Cr. 436. 
 
SUIT IN EQUITY. " 315 
 
 period, because that would be putting an application for Chap. XIV. 
 an injunction on notice, where all parties have an oppor- 
 tunity of being heard in the same condition, as an in- 
 junction 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." (a) 
 
 In Bovill V. Orate (b) an injunction was refused al- 
 though the delay was caused by the difficulty the plaintiff 
 had found in selecting a person to proceed against from 
 a number who had infringed the patent. 
 
 If a patentee is aware that any person is about to use 
 
 what he alleges to be his invention and he allows him to j 
 
 go on and expend money in erecting machinery and to ' 
 
 use it, he will not be entitled to an injunction, (c) 
 
 Where the patent has expired the defendant may Patent ex- 
 
 pirsd. 
 upon a motion to commit for breach of the injunction 
 
 show that by the expiration there is no longer any order 
 
 of the Court existing which he has infringed, (d) But an 
 
 injunction may be granted to restrain the sale, both 
 
 before and after the expiration of the term limited by the 
 
 patent, of machines piratically manufactured while the 
 
 patent is in force with a view of throwing them upon the 
 
 market when the patent has expired, (e) 
 
 The invalidity of a patent on the ground of the 
 
 expiration of a foreign patent cannot be raised at 
 
 (a) Bridson v. Benecke, 12 (rf) Daw v. Eley, L. E. 3 Eq. 
 
 Beav. 1. And see Baxter v. 496. 
 
 Combe, 1 Ir. Ch. 284 ; Hancock (e) Crossley v. Beverley, I R. 
 
 V. Bewley, Johns. 601 ; Smith v. & M. 166, n. ; 1 Webs. P. R. 
 
 London and South Western Rail- 119; Price's Patent Candle Co. 
 
 way Co., Kay, 417. v. Bauwen's Patent Candle Co., 
 
 (J) L. R. 1 Eq. 388. 4 K. & J. 731. 
 
 (c) Neilson v. Thompson, 1 
 Webs. P. R. 275. 
 
316 SUIT IN EQUITY. 
 
 Chap. XIV. j the hearing if the point has not ' been raised by the 
 
 . j- answer, (a) 
 Misrepre- A manufacturer will not be restrained from selling, as 
 
 machine. the plaintiff's machines, " with the latest improvements," 
 
 old machines manufactured and sold by the plaintiff with- 
 out such improvements. (&) 
 Trial of ques- Formerly when a question of law or fact arose during 
 fact. the trial of a suit in equity, it was necessary to state a 
 
 case for the opinion of a Court of Law on the legal 
 question, or to direct an issue as to the question of fact, 
 or to direct an action to be tried at law if a mixed question 
 of law or fact was raised, the bill being retained until the 
 , points in dispute were settled. By 15 and 16 Vict. c. 
 '; 86, ss. 61 and 62, power was given to the Court of 
 [ Chancery to determine any question of law which in the 
 I judgment of the Court should be necessary to be decided 
 I previous to the decision of the equitable question at issue 
 between the parties, and also to determine the legal title 
 or right of any party seeking equitable relief. By 21 and 
 22 Vict., c. 27, power was given to the Court to try 
 questions of fact before itself either with or without a 
 jury. These powers were enlarged by 25 and 26 Vict, 
 c. 42 which enacted that the Court, should determine every 
 ^^-^"question of law and fact incident to the relief sought, at 
 the same time giving it power to direct issues to be tried 
 at assizes when more convenient. 
 
 Where the validity of the patent had already been es- 
 tablished in an action, an issue was directed to try whether 
 the plaintiff was the true and first inventor, (c) 
 
 (a) Bovill V. Ooodier, L. E. Machine Co. v. Wood, 20 L. T. 
 2 Eq. 195. (N. S.) 10. 
 
 (J) Wilcox Sj- Gibbs Sewing (c) Bovill v. Goodier, L. R. 
 
 2 Eq. 195. 
 
SUIT IN EQUITY. 317 
 
 The effect of the Act is simply to say that the Court . Chap. XIV. 
 shall not send away any case to be tried elsewhere, its Effect of the 
 powers are not limited. The plaintiff wiU be entitled to ^''^■ 
 an injunction if he can show long and quiet enjoyment of 
 the patent, or if he has successfully supported it in an 
 action, and the Court will now enter into the question of 
 validity on a motion for an injunction, (a) 
 
 Issues will not be directed to be tried at assizes unless 
 the balance of convenience is greatly in favour of such a 
 course. In Young v. Fernie(b) Lord Westbury said : "1 
 construe the statute as laying down the rule for the future 
 that these things shall be heard and determined in this 
 Court. The proviso operates by way of exception only 
 to the rule; and in order to bring a case within the 
 proviso, the Court must be satisfied that the administra- 
 tion of justice in the particular suit may be more conve- 
 niently exercised and promoted by directing issues to be 
 tried by a jury at the assizes or at any sittings in London 
 or Middlesex for the trial of issues in the Common Law 
 Courts, than by completing the hearing and enquiry 
 before itself. In a patent case particularly, and in this 
 case, having regard to the nature of the questions raised, 
 I do not think that anything more inconvenient can be 
 suggested than that where there are mixed questions of 
 law and fact, the one bound up with the other and scarcely 
 capable of being separated, an attempt should be made to 
 cut the cause in halves and to send one half of it to be tried 
 by a jury in a Court of Common Law, reserving the other 
 half for the determination of this Court." (c) 
 
 The usual issues may be granted before the hearing of Grant of issues. 
 
 (a) Davenport v. Jepson, 1 (c) And see Fernie v. Young, 
 
 N. K. 173. L. E. 1 H. L. 63 ; Copeland v. 
 
 (6) 1 De G. J. & S. 354. WeU, 1 K K. 119. 
 
318 
 
 SUIT IN EQUITY. 
 
 Separate 
 issues. 
 
 Addition of 
 new issue. 
 
 Chap. XIV. the causOj although the defendant denies the validity of 
 the patent, (a) Issues will not be granted at the request 
 of the defendant when the motion is opposed by the 
 plaintiff, (b) 
 
 The Court may direct separate issues to be tried 
 before itself; the practice is not to be considered as 
 peremptory^ but is to be regarded as nothing more than 
 a convenient mode of arranging the questions to be 
 decided by the Court, (c) 
 
 A defendant will not be allowed to add a totally new 
 issue of fact not in any way suggested by his answer, to 
 the issues which have been already directed for trial, and 
 it appears that to raise such new issue the defendant 
 must file a supplemental answer, (d) 
 
 The forma of issues usually adopted are those ordered 
 to be tried in Davenport v. Jepson, (e) as follows : — 
 
 1st. Whether the invention in the pleadings men- 
 tioned was the working or making of any manner of new 
 manufacture which others at the time of making the 
 
 letters patent of the day of 18 — in the 
 
 pleadings mentioned did noi jisa-? 
 
 2nd. Whether the grantee of the said letters patent 
 was the true and first inventor of the said new manu- 
 facture ? 
 
 3rd. Whether the specification particularly described 
 and ascertained the nature of the invention for which 
 the said letters patent were granted, and the manner in 
 which the same is to be performed ? 
 
 Forms of 
 issues. 
 
 (a) Arnold v. Bradbury, L. 
 R. 6 Ch. 706. 
 
 (J) Henderson v. Runcorn 
 Soap and Alkali Co., 19 L. T. 
 (N. 8.) 277. 
 
 (c) CurHs V. Piatt, 11 L. T. 
 (N. S.) 250. 
 
 (d) Morgan v. Fuller, L. K. 
 2 Eq. 296. 
 
 («) 1 N. R. 307. 
 
SUIT IN EQUITY. 319 
 
 4th. Whether the said defendant A. B. has infringed Chap. XIV. 
 the said letters patent ? 
 
 In Benard v. Levinstein, (a) another issue was added, 
 viz. was the invention one of public utility ?(&) 
 
 An issue may be granted to determine whether the 
 invention described in the specification is that for which 
 the patent is granted, and the form is as follows : 
 Whether Her Majesty the Queen did grant the letters 
 
 patent, dated the day of 18 — for the alleged 
 
 invention as described and claimed by — ■ — • in the speci- 
 fication of the letters patent granted to him for . (c) 
 
 The plaintiff upon trial of issues is entitled to adduce Evidence, 
 evidence in reply for the purpose of rebutting the case 
 set up by the defendant, as it is impossible for him to 
 know the nature of the evidence which will be pro- 
 duced, but after his evidence in reply has been given, 
 and the evidence for the defence has been summed up, 
 the defendant will not be allowed to bring further 
 evidence to contradict that given by the plaintiff's wit- 
 nesses in reply, {d) 
 
 If the case is clear, the Court will determine the Righttoajury. 
 question of fact without reference to a jury. Where the 
 issues raised have already been determined, the defendant 
 has no right to have them referred to a jury ex debito 
 justiticB. But where there is really a doubtful case, the '^\ ) ) 
 Court will not refuse to have the question decided by a JJ^/ 
 jury if either party wishes it. (e) '' If," said Lord 
 
 (a) 11 L. T. (N. S.) 766. (d) Perm v. Jack, L. E. 2 Eq. 
 
 (i) See also Spencer v. Jack, 314. 
 11 L. T. (N. S.) 242; Penn v. (e) Davenport v. Goldberg, 2 
 
 Jacl, 14 L. T. (N. S.) 496. H. & M. 282. 
 
 (c) Needkam v. Oxley, 2 N. 
 E, 232. 
 
320 SUIT IN EQUITY. 
 
 Chap. X|V.\ CaimSj ''the Court thinks it best that a question should 
 
 be tried before a jury, a jury can be hadj but if in the 
 f opinion of the Court a trial without a jury is preferable, 
 neither party can claim a jury as a matter of right. It 
 is a fallacy to say that under the old practice the Court 
 required a legal question to be tried by jury. What it 
 required was the judgment of a Court of Common Law. 
 In most cases it was a necessary incident to proceedings 
 at law that there should be the verdict of a jury before 
 judgment, but these cases were sent to law not that they 
 might be tried by a jury, but because this Court had not 
 jurisdiction to decide upon a legal right, (a) 
 
 When the plaintiff's counsel 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. (6) 
 
 When the Court is sitting without a jury, it will not 
 require 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 to 
 diminish expense, and to hasten the determination of the 
 suit. Thus where the defendant gave no notice of 
 objections to the 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 his own had been opened, a motion by 
 /; him to amend his particulars of objections by an alle- 
 gation of prior publication in a given document was 
 allowed, (c) 
 
 (a) Bovill V. Hitchcock, L. (b) Tangye v. Stott, 14 W. R. 
 
 R. 3 Ch. 417. And see Patent 128. 
 
 Marine Inventions Co. v. Chad- (c) Renard v. Levinstein 11 
 
 burn, 21 W. R. 745. L. T. (N. S.) 505. 
 
SUIT IN EQUITY. 321 
 
 It appears that it is not necessary to certify for a special Chap. xiv. 
 jury, when questions of fact are tried before the Court ' 
 
 itself, (a) 
 
 After the jury have delivered their verdict on a given New trial. 
 issue, the Court of Appeal will not, except on a motion 
 for a new trial, or a motion for a judgment non obstante 
 veredicto enter into the question and set aside the verdict 
 of the jury, and the same rule holds good upon a trial 
 before a judge alone, (b) 
 
 There is the same right of appeal from any order of 
 the Court on an application for a new trial as from any 
 other order, (c) and the proviso applies equally whether 
 the trial was with or without a jury, (d) 
 
 The verdict of a judge is of the same effect as the 
 verdict of a jury, and any person may apply for a new 
 trial, either to the judge before whom the trial was had, 
 or to the Court of Appeal in Chancery, (e) 
 
 An appellant may move for a new trial within the Decree en- 
 time allowed for that purpose, although the decree has 
 been enrolled, (f) 
 
 Where the issues raise mixed questions of law and 
 fact, if the decision of one of the questions discussed is 
 sufficient to dispose of the case, final judgment may be 
 given without ordering a new trial, (g) 
 
 (a) Needham v. Oxley, 2 N. (d) Curtis r. Flatt, L. R. 1 
 
 K. 388. H. L. 337. 
 
 (h) Fernie v. Young, L. R. 1 (e) 21 & 22 Vict. c. 27, s. 
 
 H. L. 63 ; Simpson v. Holliday, 5. See also Fernie v. Young, 
 
 ib. 315. L. R. 1 H. L. 63 ; Curtis v. 
 
 (c) 21 & 22 Vict, c, 27, s. 3. Piatt, ib. 337. 
 
 See also Simpson v. Holliday, (/) Fernie v. Young, L. R. 1 
 
 L. R. 1 H. L. 315 ; Curtis v. H. L. 63. 
 
 Piatt, ib. 337. (g) Simpson v. Holliday, L. 
 
 R. 1 H. L. 315. 
 
322 SUIT IN EQUITY. 
 
 Chap. XIV. Wtere a new trial is moved for on the ground that 
 Rejection of evidence has been improperly rejected ; the evidence 
 evidence. ought to have been formally tendered to the judge of 
 the Court below and rejected by him. (a) 
 
 The trial of questions of fact and the hearing of the cause 
 
 should not be fixed for the same day except by consent. (&) 
 
 Particulars of The plaintiff must before the trial deliver particulars 
 
 objections. of the breaches complained of by him, and the defendant 
 
 must deliver particulars of any objections on which he 
 
 means to rely at the trial, (c) 
 
 If the particulars and the pleadings give the defendant 
 fair notice of the case intended to be made against him 
 by the plaintiff, they will be sufficient, (d) Where the 
 particulars merely mentioned certain machines made by 
 the defendants, they were held to be sufficient. (e) The'' 
 defendant must in his particulars of objections, put the 
 plaintiff in possession of all he himself kno ws, so far as 
 to enable him to identify the instances aJleged, the 
 principle of the court being to prevent the plaintiff from 
 being taken by surprise, (f) 
 
 Where the defendant had been ordered upon the 
 application of the plaintiff to file amended particulars of 
 objections stating " the names and addresses of the 
 persons by whom, and the places where, and the dates at, 
 and the manner in which" there had been alleged user 
 prior to the date of a patent for improvements in carriages, 
 the alleged invention being, that the apparatus for open- 
 
 (a) Penn v. Bibhy, L. K. 2 (i) Renard v. Levinstein, 11 
 
 Ch. 127. L. T. (N. S.) 505. 
 
 (J) Femie v. Young, L. R. 1 (e) Needham v. Oxlet/, 1 H. & 
 
 H. L. 63. M. 248. 
 
 (c) 15 & 16 Vict. c. 83, s. 41. (/) Curtis v. Piatt, 8 L. T. 
 
 And see ante, p. 287, as to prao- (N. S.) 38. 
 tice at law. 
 
SUIT IN EQUITY. 323 
 
 ing and closing the heads of carriages could be worked Chap. X] V. 
 
 by a coachman or person sitting on the driving seat, or 
 
 by a person sitting behind the carriage ; objections that 
 
 similar head-joints had been commonly used and applied 
 
 for the same purposes by carriage builders generally 
 
 throughout Great Britaiuj long before the date of the 
 
 plaintiff's patent, and that head-joints similar in form 
 
 and action to those described in the plaintiff's specification 
 
 had been actuated in their motions by lever handles and 
 
 connecting rods before the date of the patent, in carriages 
 
 fitted up or constructed by various carriage builders in 
 
 or near London, Liverpool, Manchester, Southampton, 
 
 and various other of the principal towns of Great Britain, 
 
 where the carriage building trade had been carried on ; 
 
 were held to be insufficient, (a) 
 
 It appears, however, that "where the objection points 
 to the pubKc use of a particular preparation, the words 
 "by various makers in or near London" might be 
 sufficient, and that if the defendant cannot give the 
 names of the makers in or near London, etc., he wiU be 
 required to specify the class or classes of invention with 
 respect to which the alleged prior user has taken 
 place, (b) 
 
 The defendant wiU not be required to deliver parti- 
 culars of objections where replication has been filed and 
 the Court has refused to direct issues, (c) 
 
 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 prior ; 
 user. {d) 
 
 (a) Morgan v. Fuller, L. K. 2 (c) Bovill v. Ooodier, L. R. 1 
 
 Eq. 297. Eq. 35. 
 
 (J) 7 J. (d) Daw y. Eley, 2 H. & M. 
 
324 
 
 SUIT IN EQUITY. 
 
 Chap. XIV. 
 
 Form of order. 
 
 Evidence. 
 
 Amendment. 
 
 Pleading. 
 
 The following is the form of order for the delivery of 
 particulars : — " Ordered that the plaintiff do on or 
 before the day of inst. dehver to the solicitor 
 
 of the said A. B. particulars m writing, pf the breaches 
 complained ofj and that the said defendant A. B. 
 do on or before the day of inst. deliver to 
 
 the plaintiff's solicitor, particidars in writing of any 
 objections on which he means to rely at the trial hereby 
 directed." (a) 
 
 No evidence can be given in support of any alleged 
 infringement or of any objection impeaching the validity 
 of the patent which is not contained in the particulars. (&) 
 
 The defendant will not be allowed to produce evidence 
 of prior user not disclosed by the objections, even though 
 it has only come to his knowledge since they were 
 delivered; but leave wiU be given on short notice of 
 motion, to amend the particulars, so as to introduce such 
 newly discovered evidence, the defendant paying the 
 costs of the application, (c) 
 
 It is not necessary for the plaintiff to set out the speci- 
 fication of his patent in the pleadings. Where the biU 
 stated that the plaintiff had obtained a patent for new 
 and improved machinery for preparing and spinning hemp, 
 flax, and other fibrous substances, and that in his speci- 
 fication he had set forth, described and ascertained the 
 nature of his invention and the several parts thereof, and 
 by what means the same was to be performed, and referred 
 for greater certainty to the specification and also alleged 
 
 725 ; Bovill v. Smith, L. R. 2 
 Eq. 459. 
 
 (a) Davenport v. Jepson, 1 N. 
 K. 307. 
 
 (J) 15 & 16 Vict. c. 83, s. 41. 
 
 (c) Daw V. Eley, L. R. 1 Eq. 
 38 ; Renard v. Levinstein, 13 
 W. R. 229 ; Penn v. Bibhy, L. 
 R. 1 Eq. 548. 
 
SUIT IN EQUITY. 325 
 
 that the plaintiff had been for ten years in the exclusive Chap. XIV. 
 enjoyment of the patent and had estabKshed his legal 
 title by repeated actionSj a general demurrer for want of 
 equity was overruled, (a) 
 
 Not is it necessary that there should be an express 
 averment of the novelty of the invention, as the allegation 
 of the grant and production of the letters patent throw "^WV^ 
 upon the defendant the onus of disputing the novelty, [b) 
 
 Where a biU was filed to restrain the infringement of Double plea. 
 a patent, and for an account, and the defendants were 
 desirous of disputing 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, 
 the defendant was allowed to plead first that the invention 
 was not useful ; secondly, that it was not new. (c) 
 
 Before a double plea can be put in, the defendant must Order must be 
 obtain an order for leave to do so, and if the plea is 
 filed without an order, it is irregular and liable to be 
 overruled, {d) 
 
 The assignee of a patent may maintain a suit to restrain Pai-ties. 
 infringement against the assignor and subsequent licensees 
 from him, who have notice of the assignment, although^ 
 when the suit was instituted, the assignment had not been 
 registered, (e) 
 
 The directors and managers of a company are proper 
 parties. (/) 
 
 (a) Kay v. Marshall, 1 M. & (d) lb. 
 
 Cr. 373 ; Westhead v. Keene, 1 (e) Hassall v. Wright, L. R. 
 
 Beav. 287. 10 Eq. 509. 
 
 (J) Amory v. Brown, L. K. (/) Belts v. De Vitre, 34 L. 
 
 8 Eq. 663. J. Ch. 289. 
 
 (c) Kay V. Marshall, 1 Keen, 
 190. 
 
326 SUIT IN EQUITY. 
 
 Chap. xiv. Where a company had been formed for the purchase of 
 the plaintiff's patentj and no written contract had been 
 signed, and no assignment had been executed by the 
 plaintiff, but the company 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, (a) 
 Consolidation If the patent has been infringed by several persons 
 who have no connection with each other, there must be a 
 separate biU against each person who has infringed ;(&) 
 the Court will in such a case direct the suits to be con- 
 solidated, if possible. Thus, where a patentee had filed 
 134 bills; upon a motion by 19 of the defendants, that 
 the plaintiff should proceed in such one only of the suits 
 as he should select for the purpose, until such suit should 
 have been determined, or untU the validity of the patent 
 should have been decided, and that the proceedings in the 
 other suits should in the meantime be stayed, the defen- 
 dants undertaking to abide by the result of the suit to be 
 selected, so far as the validity of the patent was concerned, 
 in like manner as if the same result had been 'arrived at 
 in the several suits ; a trial of the validity of the patent 
 as against the plaintiff and the several defendants before 
 jthe Court, to be conducted by three of the defendants 
 representing different classes of infringers, on behalf of 
 the remainder, all objections to be delivered within a 
 fortnight ; was ordered, with liberty for defendants in any 
 of the other suits to apply to be made parties, (c) 
 
 In a similar case. Sir W. P. Wood, V. C, suggested 
 that the plaintiff, instead of filing many bills, might, after 
 
 (a) Westhead\.Keene,l'BeaY. (c) Foxwell v. Webster, 10 
 
 287. Jur. (N. S.) 136 ; 2 Dr. & Sm. 
 
 (6) Dilly V. Doig, 2 Ves . J. 478 . 250. 
 
SUIT IN EQUITY. 327 
 
 getting information of case after case of infringement. Chap. xiv. 
 select that which he thought the best to try the question 
 fairly, and proceed in that case to obtain his interlocutory 
 injunction, at the same time writing to the others who 
 were in simili casu, saying : " Are you willing to take ] '| i 
 this as a notice to you that the present case is to deter-/ ' 
 mine yours ? Otherwise I shall proceed against you by 
 way of interlocutory injunction; and if you do 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 ? If you do not object, I 
 shall file a bill against only one of you." (a) 
 
 The plaintiff, in applying for an injunction ex parte, Affidavits. 
 
 must swear as to his belief that he is the original inven- — --^j 
 
 tor ; 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 intervened, or infor- 
 mation been communicated, sufficient to convince him that 
 the patent was not his own original invention, and that 
 he was under a mistake when he made his previous 
 declaration to that effect, (b) The reason that such an 
 affidavit is required, is that the injunction asks that a 
 legal title may be protected, which legal title ought to 
 be sworn to, and the facts supported before the Court.(c) 
 The motion may be ordered to stand over, to allow such 
 an affidavit to be m.a.de.{d) 
 
 (a) Bovill V. Crate, L. R. 1 (c) Gardner v. Broadbent, 2 
 
 Eq. 391. Jur. (N. S.) 1041. 
 
 (6) Per Lord Eldon in Hill v. (d) Mayer v. Spence, 1 J. & 
 
 Thompson, 3 Mer. 624 ; 1 Webs. H. 87 ; Whitton v. Jennings, 1 
 
 P. E. 236 ; Sturtz v. De la Rue, Dr. & Sm. 211. 
 5 Euss. 329 ; Mayer v. Spence, 
 1 J. & H. 87. 
 
and discovery. 
 
 328 SUIT IN EQUITY. 
 
 Chap. XIV .^ The affidavit must state particularly in what the alleged 
 // infringement consists, (a) 
 
 / The plaintiff must prove, first, that the thing made is 
 his own patented article, and, secondly, that it has been 
 unlawfully sold ; and he must be prepared to swear dis- 
 tinctly that it is not manufactured by him or his 
 agents. (&) 
 
 If there is any material variation between the allega- 
 tions 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, (c) 
 
 Where the patentee is dead, the affidavits must state 
 the title of the plaintiff, (d) 
 Interrogatories A defendant who Submits to answer must answer fully ; 
 he cannot by denial of the plaintiff's title escape answer- 
 ing, (e) In a suit to restrain the infringement of a 
 patent for improvements in preparing colouring matter 
 for dyeing and printing, the process, as described in the 
 specification, consisted in boiling a mixture of red aniline 
 dye and aniline with hydrochloric acid and water. The 
 defendant denied that his process was an infringement, 
 and alleged that it was a secret, and that his trade de- 
 pended on his keeping it secret. It was held that he was 
 bound to answer whether he used the materials men- 
 tioned in the specification, and whether lie used any addi- 
 tional materials, but that he was not bound to disclose 
 
 (a) Hill V. Thompson, 3 Mer. (d) Bickford v. Skewes, 1 
 
 626 ; 1 Webs. P. R. 236 ; Mayer Webs. P. R. 211. 
 V. Spence, 1 J. & H. 87. (e) Swinhom v. Nel.ion, 16 
 
 Q>) Belts T. Willmott, L. K. 6 Beav. 416 ; Hoffman v. Postill, 
 
 Ch. 239. L. R. 4 Ch. 673. 
 
 (c) Stocking V. Llewellyn, 3 
 L. T. 33. 
 
SUIT IN EQUITY. 329 
 
 the proportions in wMch he used the specified materials, Chap. XIV. 
 nor what the additional materials were, (a) 
 
 Where the defendant, by his answer, sets up the de- 
 fence that the invention is not new, the plaintiff is not 
 entitled 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 ;(&) but the defendant 
 may ask any question tending to destroy the plaintifi'^s 
 claim, (c) 
 
 A question in an interrogatory is not less one of fact, 
 because, in maintaining the subject matter of the question, 
 the interrogatory refers to the specification, or to some 
 written document, {d) 
 
 The defendant must state the names and addresses of 
 all persons from whom he has received sums of money 
 for the use of articles alleged to have been manufactured 
 in infringement of the plaintiff's right, even though such 
 persons reside abroad ; (e) he must also state the number of 
 machines sold by him, the profit, and the names of the 
 purchasers, and cannot refuse to answer, on the ground 
 that he would thereby disclose the names of his customers 
 and the secrets of his trade. (/) 
 
 A defendant cannot be excused from answering fully 
 and at once, on the ground that the validity of the patent 
 would require to be established by an issue j(gf) but if 
 the discovery sought is wholly immaterial to the plain- 
 
 (a) Renard v. Levinstein, 3 (<f) lb. 
 
 N. R. 665 ; 10 L. T. (N. S.) 94. (e) Crossley v. Stewart, 1 N. 
 
 (6) Daw V. Eley, 2 H. & M. E. 426. 
 
 725 ; Bovill v. Smith, L. R. 2 (/) Howe v. M'Kernan, 30 
 
 Eq. 459. Beav. 547. 
 
 (c) Hoffman v. Postill, L. E. (g) Foxwell v. Webster, 3 N. 
 
 4 Ch. 673. R. 103. 
 
330 
 
 SUIT IN EQUITY. 
 
 Taking bill 
 fro confesso. 
 
 Chap. XIV. tiff's title, wMcli the defendant denies, he will not be 
 obliged to answer, and is not obliged to put in a plea 
 denying infringement, (a) 
 
 Where separate bills have been filed against numerous 
 defendants, the plaintiff has a right to have a separate 
 answer from each defendant. (&) 
 
 When a defendant, who was out of the jurisdiction of 
 the Court, had been duly served with the bill and inter- 
 rogatories, and did not appear or put in an answer, the 
 Court ordered that notice should be given to him, that 
 unless he put in an answer within fourteen days from the 
 service of the notice, an appearance would be entered for 
 him, and proceedings taken to have the biU taken pro 
 confesso. (c) 
 
 If the plaintiff is able to establish his title to an 
 injunction, an account wiU also be granted in order 
 that his remedy may be complete, (d) And if no case is 
 made for an injunction the account will not be decreedj(e) 
 although it may appear at the hearing that since the 
 interim injunction was moved for, the defendants have 
 sold articles, which, had the facts and law been then suf- 
 ficiently ascertained, the Court would have restrained 
 them from selling. (/) 
 
 If a patent has been infringed the patentee is entitled 
 to an injunction and an account, even though the defen- 
 
 Aooount. 
 
 (a) De la Sue t. Dickinson, 
 S K. & J. 388. 
 
 (i) Foxwell V. Wehster, 3 
 N. R. 103. 
 
 (c) Grover Sf Baker Sewing 
 Machine Co. v. Millard, 8 Jur. 
 (N. S.) 713. 
 
 (d) Baily v. Taylor, 1 K. & 
 M. 73. 
 
 (e) Smith v. The London and 
 South Western Railway Co., 
 Kay, 408; Kemot v. Potter, 3 
 De G. F. & J. 447. 
 
 (/) Price's Patent Candle Co. 
 V. Bauwen's Patent Candle Co., 
 4 K. & J. 727. 
 
SUIT IN EQUITY. 331 
 
 dant tas submitted and has offered before suit, to pay the Chap. XIV. 
 amount of profits made, {a) 
 
 Where letters patent are granted to two or more 
 jointly any one of the grantees may use the invention 
 without the consent of the others, and is not liable to 
 account to them for the profits he has made. (&) Where 
 a patentee agreed with the defendant that he should 
 make and sell the patented machines, paying not more 
 than a certain sum as royalty to the patentee for each 
 machine sold, and retaining a certain sum on his own 
 account, so that the total amount charged for each 
 machine should not exceed a fixed sum, it was held 
 that the patentee could not maintain a suit in Equity 
 for an account against the defendant as agent, although 
 in one case he had receiyed a sum of money for the 
 patentee, (c) 
 
 If the account is only a part of an agreement which 
 the Court cannot wholly enforce, the account alone will 
 not be decreed, but the parties will be left to their 
 remedy at law.((?) 
 
 The account extends over the six years immediately 
 previous to the filing of the bUl, and is of all profits and 
 benefits derived from the use of articles made according 
 to the patent for that time. There must be no delay in 
 applying for an account, (e) 
 
 (a) Nunn v. D' Albuquerque, (d ) Kernot v. Potter, 3 De Gr. 
 
 34 Beav. 595. F. & J. 447. 
 
 (6) Mathers v. Oreen, L, K. (e) Crossley v. Derhy Oas- 
 
 1 Ch. 29. light Co, 1 Webs. P. B. 119. 
 
 (c) Moxon V. Bright, L. E. As to the form of order for an 
 
 4 Ch. 292. See also as to ac- injunction and account, see Betts 
 
 count between principal and v, De Vitre, 34 L. J. Ch. 289. 
 agent, Edwards \. Normandy, 3 
 N. B. 562. 
 
332 
 
 SUIT IN EQUITY, 
 
 Chap. XIV. 
 
 Damages. 
 
 Not given 
 "where account. 
 
 Form of in- 
 quiiy. 
 
 Remedy 
 against both 
 manufacturer 
 and user of 
 patented 
 article. 
 
 The Court has power in all cases in which it has 
 jurisdiction to entertain an application for an injunction 
 against a breach of any covenant, contract or agreement, 
 or against the commission or continuance of any wrongful 
 act, or for the specific performance of any covenant, con- 
 tract or agreement; to award damages to the party 
 injured, either in addition to, or in substitution for such 
 injunction or specific performance, to be assessed either 
 by a jury or by the Court itself, (a) 
 
 The Court will not direct both an inquiry as to 
 damages and also an account of profits, as the two 
 things are hardly reconcilable ; if an account of profits 
 is taken, the infringement is condoned. (6) 
 
 Where an inquiry as to damages is directed the form 
 will be " What damages the plaintiff has sustained," not 
 " what damages, if any," as in the case of a trade mark ; 
 the difference between the case of a trade mark and that 
 of a patent being that 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 manufacture under my mark." He may find 
 his customers fall off in consequence of the defendant's 
 manufactures, but it does not necessarily foUow that he 
 can claim damages for every article manufactured by the 
 defendant, even though it be under that mark, whereas 
 on the other hand every sale without licence of a patented 
 article must be a damage to the patentee, (c) 
 
 Where bills to restrain the infringement of a patent 
 have been filed against both the person who manu- 
 
 (a) 21 & 22 Vict. c. 27. 
 
 (b) NeiUon v. Belts, L. R. 5 
 I-I. L. 22 ; De Vitre v. Belts, L. 
 R. 6 H. L. 319. 
 
 (c) Per Sir W. P. Wood, 
 V. C, in Davenport v. Rylands, 
 L. R. 1 Eq. 302 ; Belts v. De 
 Vitre, 34 L. J. Ch. 289. 
 
SUIT IN EQUITY. 333 
 
 factures and tlie person who uses the article, and issues Chap. xiv. 
 of fact have been found for the plaintiff, he is entitled 
 not only to an account against the manufacturer of the 
 patented article, but also to damages against the person 
 who uses itj wherever it be found, (a) But a plaintiff 
 who has obtained a decree against wrongful users, not 
 being manufacturers of his invention, and who has been 
 paid the ordinary royalty charged by him, by such users, 
 cannot recover any further royalties from the manufac- 
 turer who supplied the machines. (6) 
 
 Damages may be awarded at the hearing although the Damages may 
 patent has expired, if there was jurisdiction when the thouo-h patent 
 bill was filed. _ IT^er"'' 
 
 In Davenport v. Rylands (c) Sir W. P. Wood, V. 0., 
 said: " Prima facie, I was somewhat impressed with the 
 notion that in order to award damages at the hearing, 
 the Court must have jurisdiction to grant an injunction. 
 But I think that would be a narrow construction to put 
 upon this beneficial Act. If it were adopted in this 
 case and I were to dismiss the bill without costs, an 
 action would be open to the plaintiff, and thus the very 
 mischief contemplated by the legislature would ensue. 
 A person coming here would be turned round and told, 
 ' Although it be true that the jurisdiction existed at the 
 time of the filing of the bill, something has occurred 
 since which prevents the jurisdiction attaching at the 
 hearing, and therefore, now, you must be left to go to 
 law and the whole matter shall be tried over again there. 
 Although this Court has (assuming the construction of 
 the statute I am adopting) full power to grant damages 
 
 (a) Penn v. Bibhy, L. K. 3 (J) Pemv. JacA,L.R.5Er[.81. 
 
 Eq. 308. (c) L. R. 1 Eq. 302. 
 
334 SUIT IN EQUITY. 
 
 Chap. XIV. instead of the injunction and settle the whole dispute 
 between the parties ; yet the Court will not do that, in 
 consequence of something that has happened since the 
 filing of the bill, and during litigation.' I think the 
 sound view of the whole case is that I ought to exercise 
 the jurisdiction granted to me by the Act, that I ought to 
 consider myself as having had jurisdiction at the time 
 the bill was filed, for the purpose of ultimately giving 
 relief pursuant to the Act, and therefore I shall direct 
 an inquiry as to what damages the plaintiff has sus- 
 tained, and I shall give the plaintiff the costs up to the 
 hearing." 
 
 There must be no doubt as to the validity of the 
 patent, (a) 
 
 Where, however, the biU was filed so immediately 
 before the expiration of the patent as to render it impos- 
 sible to obtain an interlocutory injunction the biU was dis- 
 missed with costs, it being held that it was a mere device 
 to transfer the jurisdiction to award damages from the 
 Court to which that jurisdiction properly belongs, to the 
 Court of Chancery. (6) 
 
 A patentee who is not in the habit of manufacturing 
 the patented article but is accustomed to grant particular 
 licences to other manufacturers, on the payment of a 
 royalty, can only on a decree for damages " by reason 
 " / of user or vending " of the invention, claim damages to 
 the amount of the royalty. He therefore cannot also claim 
 a manufacturing profit, and a fortiori, not such a manu- 
 facturing profit as he would have made if every unlicensed 
 machine had been sent to him to be fitted with the in- 
 
 (a) Fox V. Dellestable, 15 W. (b) Belts v. Gallais, L. K. 10 
 
 R. 194. Eq. 392. 
 
SUIT IN EQUITY. 335 
 
 vention. It appears, however, that it would be otherwise Chap. XIV. 
 if he had been in the habit of charging infringers with a 
 higher royalty than ordinary licensees. (a) 
 
 Where there wiU be extreme difficulty in the Court 
 seeing its way to assess the damages, it appears that leave 
 will be given to the plaintiff to proceed at law for the 
 purpose of recovering damages. (6) 
 
 The plaintiff on making out a prima facie case of in- Inspection, 
 fringement is entitled to an order to permit him and his 
 witnesses to inspect the defendant's machinery at work 
 on giving reasonable notice, (c) and the defendant and 
 his witnesses wiU also be entitled to inspect the plaintiff's 
 machinery at work, as it is the object of the Court to 
 enable the parties to produce sufficient evidence at the 
 trial, (d) But an order for inspection cannot be granted 
 when the alleged piracy has taken place abroad, (e) In- 
 spection is not a matter of right ; but the Court will 
 require it to be satisfactorily proved, first that there is 
 really a case to be tried at the hearing of the cause ; and 
 secondly that the inspection asked for is of material im- 
 portance to the applicant's case as made out by his 
 evidence, (f) 
 
 In Tolson's Patent {g) an application for an inspection inspection of 
 of a provisional specification, on the ground that the specification, 
 subject matter was the same as that for which the appli- 
 cation had obtained a patent, was refused. 
 
 (a) Pera«v.JacA,L.R.5Eq.81. P. R. 458 ; Davenport \. Jepson, 
 
 (J) Betts V. Be Vitre, 11 Jur. 1 K K. 308. 
 (N. 8.) 9, and see Hills v. Evatis, (e) Neilson v. Betts, L. E. 5 
 
 8 Jur. (N. S.) 525. H. L. 1. 
 
 (c) Morgan v. Seaward, 1 (/) Piggott v. Hie Anglo- 
 Webs. P. R. 169; Bovill v. American Telegraph Co. 19 L. 
 Moore, 2 Coop. C. C. 56 n. T. (N. S.) 46. 
 
 (d) Russell V. Cowley, 1 Webs. (g) 6 D. M. G. 422. 
 
336 SUIT IN EQUITY. 
 
 Chap. XIV. The form of the order is as follows: " Ordered that the 
 
 Form of order, plaintiff and the defendant A. B. 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 
 plaintiff and the said defendant in the manufacture of ^ 
 and that the same machines be put to work upon such 
 inspection, and that the plaintiff and the said defendant, 
 by their said witnesses and solicitors, be at liberty to take 
 samples of the — made or to be made upon the said 
 machines." (a) 
 
 The defendant will not be compelled to allow the 
 plaintiff to inspect all the machines in his stock ; but he 
 will 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, (&) and 
 the plaintiff will be entitled to put the machines to work 
 and take samples of the produce, (c) 
 
 Samples for The Court has power to order the defendant to deliver 
 
 samples to the plaintiff for the purpose of analysis. Thus 
 where the plaintiffs were the proprietors of a patent for 
 improvements in the manufacture of type, and the defend- 
 ant was a printer who used types alleged to be a colourable 
 imitation of the type manufactured by the plaintiffs, he 
 was ordered to deliver up a sample for analysis. (cZ) Laches 
 sufficient to defeat the plaintiffs' right to an interlocutory 
 injunction is no bar to an order on the same motion for 
 inspection and analysis. (e) 
 
 (a) Davenport v. Jepson, 1 N. (c) Davenport v. Jepson, 1 
 
 K. 308. N. R. 308. 
 
 (6) Binger Manufacturing Co. [d) Patent Type Founding Co. 
 
 V. Wilson, 5 N. R. 505. v. Walter, Johns. 727. 
 
 (0 lb. 
 
 analysis. 
 
SUIT IN EQUITY. 337 
 
 All articles in the possession of the defendant manu- Chap. xiv. 
 factured in violation of the plaintiff's patent may be 
 ordered to be delivered up and destroyed, (a) But where 
 a patent for a combination of machinery only has 
 been infringed, the Court will not order the defendant's 
 machines to be broken up, but will order them to be 
 marked. (&) 
 
 The Court will if asked give such a certificate that the 
 validity of the patent has come in question in the suit and 
 has been determined in favour of the plaintiff as described 
 in the Patent Law Amendment Act (15 and 16 Vict. c. 
 83, 3.43). (c) 
 
 The usual rules as to the costs of a motion are those Costs of 
 laid down by Sir J. Leach in 1 Sim. & S. 357, 1 : That 
 the party making a successful motion is entitled to hia 
 costs as costs in the cause ; but the party opposing it is 
 not entitled to hia costs as costs in the cause. 2. That 
 the party making a motion which fails is not entitled to 
 hia costs as costa in the cause ; but the party opposing 
 it is entitled to hia costs as costs in the cause. 3. That 
 where a motion is made by one party and not opposed by 
 the other, the costs of both parties are costs in the cause. 
 
 Where the plaintiff obtained an injunction on motion, 
 the defendant appearing and opposing, and at the 
 hearing the bill was dismissed with costs, it was held 
 that the defendant was entitled to the costs of the motion 
 which he had unsuccessfully opposed ; (d) and where the 
 motion for an injunction stood over pending the trial of 
 
 (a) Betts V. De Vitre, 34 L. (c) Needham v. Oxley, 11 W. 
 
 T. Ch. 289 ; Tangye v. Stoti, R. 852. 
 14 W. R. 386. {d) Stevens v. Keating, 1 Mac. 
 
 (6) Needham v. Oxley, 11 W. & G. 659. 
 R. 852, 2 N. R. 388. 
 
338 SUIT IN EQUITY. 
 
 Chap. XIV an action, and nothing was said about costs; and the bill 
 was ultimately dismissed with costs, it was held that the 
 defendant's costs of the motion were costs in the cause, (a) 
 The plaintiff is entitled to the costs of an injunction, 
 although the defendant promises to commit no further 
 act of infringement. (6) 
 
 Costs of suit. But if the defendant submits and offers to pay all costs 
 
 and to give the plaintiff all the relief he requires and the , 
 plaintiff nevertheless brings the suit to a heariag, he/ 
 will not be allowed the subsequent costs of the suit, (c) 
 
 Where the directors of a company are made parties to 
 the suit, and it is proved that they have been active in 
 causing the patent to be infringed by the company ; they 
 may be ordered personally to pay the costs of suit, (d) 
 
 Costs as be- By the Patent Law Amendment Act, 15 & 16 Vict. c. 83, 
 
 tween solicitor 
 
 and client. s. 43, the judge before whom any action for infringing 
 letters patent shall be tried may certify on the record 
 that the validity of the patent came in question ; and 
 the record with such certificate being given in evidence 
 in any suit for infringing the said patent, shall entitle 
 the plaintiff in any such suit or action to his full costs, 
 charges and expenses, taxed as between solicitor and 
 client, unless the judge making such decree or order, or 
 the judge trying such action shall certify that the plaintiff 
 ought not to have such costs. 
 
 The certificate required under the above provisions 
 may be given by a judge of the Court of Chancery be- 
 fore whom the validity of the patent has been tried, (e) 
 
 (a) Beits v. Clifford, IJ. & H. (d) Betts v. De Vitre, 11 Jur. 
 
 75. (N. S.) 9. 
 
 (J) Oeary v. Norton, 1 De G. (e) Needham v. Oxley, 1 1 W. 
 
 & S. 9. K. 852. And see Hills v. Evans, 
 
 (c) Nunn v. d' Albuquerque, 4 De G. F. & J. 288 ; 8 Jur. (N. 
 
 34 Beav. 595 ; Oeary y. Norton, S.) 526. 
 1 De G. & S. 9. 
 
SUIT IN EQUITY. 339 
 
 In order that the costs may be taxed as between Chap. xiv. 
 solicitor and client, the decree or order- must, notwith- 
 standing the words of the Act, contain, as in other cases, 
 an express direction to that effect, (a) 
 
 As the statute means that the certificate should be 
 produced in evidence on a second trial for the infringe- 
 ment, and the extra costs are given in order to afford a 
 complete indemnity, the costs of a first trial will not be 
 given as between solicitor and client, (b) 
 
 (a) Lister v. Leather, 4 K. & (6) Pern v, Bibby, L. R. 3 
 
 J. 425 ; mils v. JEvans, 4 De G. Eq. 308. And see Betts v. De 
 
 F. & J. 238; 8 Jur.-CN'. S.) FzVrc, 11 Jur. (N. S.) 9 ; Daven- 
 
 526. port V. Rylands, L. R. 1 Eq. 302. 
 
CHAPTER XV. 
 
 OF PROCEEDINGS TO REPEAL LETTERS PATENT. 
 
 Chap. XV. 
 
 Pai'ties. 
 
 Particulai's of 
 objections 
 
 A 
 
 PATENT remains in force until it has been de- 
 clared void in a court of law, by proceedings taken 
 for that express purpose. The remedy provided by the 
 law against a bad patent is by the writ of scire facias, 
 which is prosecuted in the name of the sovereign. If 
 therefore a patent is void for any of the reasons already 
 considered it will be cancelled, (a) 
 
 The Patent Law Amendment Act (6) provides that 
 the writ of scire facias shall lie for the repeal of any let- 
 ters patent issued under that Act, in the like cases as the 
 same would lie for the repeal of letters patent formerly 
 issued under the great seal, and by 12 & 13 Vict. c. 109, 
 8. 29, the writ of scire facias may be directed to the 
 sheriff of any county. 
 
 One of two joint patentees cannot plead in abatement 
 that he had assigned all his interest in the patent to his 
 co-patentee before the writ was issued, and that he has 
 not since had any interest in it. (c) 
 
 The prosecutor in any proceedings by scire facias to 
 
 toiedeliyeied. repeal letters patent must deliver with his declaration 
 
 (a) For the practice upon 
 writs of scire facias, see Hind- 
 •laarcli on Patents, 376 ; Norman's 
 Law of Patents, 194. 
 
 (J) 15 & 16 Vict. c. 83, s. 15. 
 (c) Reg. V. Betts, 15 Q. B. 
 540. 
 
PROCEEDINGS TO REPEAL LETTERS PATENT. 341 
 
 particulars of any objections on which he means to rely Chap. XV. 
 at the trial in support of the suggestion of the declara- 
 tion, and at the trial no evidence will be allowed to be 
 given which is not contained in the particulars. 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 letters patent must be stated in the 
 particulars, and any judge at chambers may allow the 
 prosecutor to amend the particulars upon such terms as 
 to the judge may seem fit. (a) 
 
 Where the prosecutor, while the record was ia Chan- 
 cery, filed notice of objection that other persons than the 
 patentee had used the invention in England before the 
 grant of the patent, the Court refused on motion after 
 the proceedings were in the Queen's Bench to order the 
 delivery of the particulars, stating the names and ad- 
 dresses of such persons, (h) 
 
 The pleadings are to be delivered, not filed, (c) Pleadings. 
 
 Where the declaration contained suggestions of want 
 of novelty and utiHty in a certain part of the invention, 
 and the objections pointed out one particular claim as 
 being bad for want of novelty and utility, and the pleas 
 traversed all the suggestions, and after issue joined, dis- 
 cTaimed this particular claim, it was held that the objec- 
 tions were not part of the record so as to form part of 
 the issues to be tried, (d) 
 
 Applications as to reforming recitals and suggestions 
 in a writ of scire facias ought to be referred to one of the 
 superior courts of Common Law and not to the Court of 
 
 (a) 15 & 16 Vict. c. 83, s. 41. (6) Beg. v. Walton, 2 Q. B. 
 
 This enactment is similar to, but 969. 
 
 more comprehensive than, 5 & 6 (c) 12 & 13 Vict. c. 109, s. 31. 
 
 Will. IV. c. 83, s. 5. (d) Reg. v. Mill, 10 C. B. 379. 
 
342 
 
 PROCEEDINGS TO REPEAL 
 
 Chap. XV. 
 
 Evidence. 
 
 Suit pending 
 stayed on 
 tenns. 
 
 Chancery, as they can dispose more satisfactorily of 
 questions of pleading, (a) 
 
 The defendant is entitled to begin and to give 
 evidence in support of his patent, and if evidence is 
 adduced on the part of the prosecutor impeaching the 
 validity of the patent, the defendant will be entitled to 
 reply. (6) The onus of proof is on the prosecutor, and 
 he must show that the patent is void on some of the 
 grounds contained in the suggestions, (c) 
 
 As to refreshing the memory of a witness by draw- 
 ings, see B. V. Haddan. {d) 
 
 In Smith v. Upton, {e) the Court of Common Pleas 
 stayed proceedings in an action for infringement for a 
 definite period, to await the result of a motion pending 
 in the Queen's Bench on a scire facias, upon the terms 
 that the plaintiff should pay the defendant any costs 
 which he might have been put to in preparing for trial 
 and the costs of the motion. (/) 
 
 Where, pending proceedings in scire facias, the 
 patentee disclaimed a part of his patent, and the 
 prosecutor still proceeded and ultimately failed, he 
 was ordered to pay the costs subsequent to the dis- 
 claimer, (g) 
 
 The Court has no power to stay proceedings on a scire 
 facias or to order a nolle prosequi to be entered, as the 
 proceedings are conducted by the Attorney-General 
 
 (a) Reg. V. Hancock, 5 D. M. nom. Muntz v. Foster, 9 D. & L. 
 
 G. 332. 942. 
 
 (V) 15 & 16 Vict. c. 83, s. 41. (/) See also Walton v. Bate- 
 
 (c) Beg. V. Cutter, 3 C. & K. man, 1 Webs. P. R. 613. 
 
 215. (g-) Reg. V. Mill, 14 Q. B. 
 
 {d) 2 C. & P. 184. 312. 
 
 (e) 6 Scott (N. R.) 804 S. C. 
 
LETTEBS PATENT. 343 
 
 according to his own discretion. In Beg. v. Prosser, (a) Chap. XV. 
 Lord Langdale said : " The Attorney-General proceed- 
 ing regularly and being correct in such, respects as these, 
 conducts an action of scire facias or permits it to be 
 prosecuted according to his own judgment and discre- 
 tion, and may when he thinks fit stay the proceedings, or 
 enter a nolle prosequi. The control is his, subject only 
 to the responsibilities to which every public servant is 
 liable in the discharge of his duty, and subject to the 
 jurisdiction which the courts may have over him upon a 
 charge properly brought against him for a negligent or 
 erroneous performance of his duty. But I am of opinion 
 that, in the ordinary course of proceeding upon a writ of 
 scire facias to repeal letters patent, it is within his dis- 
 cretion to determine upon what or upon whose informa- 
 tion, or on what terms or security, he wiU permit the 
 action to be prosecuted, and that the exercise of his dis- 
 cretion in the conduct of the action is not subject to the 
 control of the courts in which the proceeding takes 
 place." 
 
 Where judgment is given for the Crown on a writ issued 
 out of Chancery, which has been sent to a Court of 
 Common Law for trial, final judgment may be given in 
 that Court to cancel the patent, though the letters patent 
 remain in the Court of Chancery. The Court has 
 authority to award the judgment, and afterwards to 
 transmit either the record or the terms thereof to the 
 Court of Chancery, to be fully carried into execution, 
 and the judgment may be that the letters patent be 
 revoked, cancelled, vacated, disallowed, annulled and held 
 void, and that the enrolment be cancelled and annulled, 
 
 (a) 11 Beav. 314. 
 
344 PEOCBEDINGS TO EEPEAL LETTERS PATENT. 
 
 Chap. XV. and that the letters patent be restored into the Court of 
 Chancery there to be cancelled, (a) and after such judg- 
 ment the Lord Chancellor has no jurisdiction to stay the 
 execution of the judgment, his duty in cancelling the 
 enrolment being only ministerial. (&) 
 
 (a) Bynner v. Reg. 9 Q. B. (J) Reg. v. The JEastem Archi- 
 
 523. pelago Co. 4 D. M. Q. 199. 
 
APPENDIX. 
 
 21 Jac. I. c. 3. 
 
 An Act concerning Monopolies and Dispensations with 
 Penal Laws, and the Forfeitures thereof. 
 
 [a. d. 1623.] 
 
 FORASMUCH as your most excellent Majesty in your Monopolies 
 royal judgment, and of your blessed disposition to the la-^^^^the *^ 
 weal and quiet of your subjects, did, in the year of our Lord realm. 
 God 1610, publish in. print to the whole realm, and to all 
 posterity, that grants and monopolies, and of the benefit of 
 any penal laws, or of power to dispense with the law, or to 
 compound for the forfeiture, are contrary to your Majesty's 
 laws, which your Majesty's declaration is truly consonant and 
 agreeable to the ancient and fundamental laws of this your 
 realm : and whereas your Majesty was further graciously 
 pleased expressly to command that no suitor should presume 
 to move your Majesty for matters of that nature : yet, never- 
 theless, upon misinformations and untrue pretences of pablic 
 good many such grants have been unduly obtained and 
 unlawfully put in execution, to the great grievance and 
 inconvenience of your Majesty's subjects, contrary^ to the 
 laws of this your realm, and contrary to your Majesty's most 
 royal and blessed intention, so published as aforesaid : For 
 avoiding whereof and preventing of the like in time to come, 
 may it please your excellent Majesty, at the humble suit of 
 the Lords Spiritual and Temporal, and the Commons in this 
 present Parliament assembled, that it may be declared and 
 enacted, and be it declared and enacted by authority of this 
 
346 
 
 STATUTES 21 JAC. 1, C. 3. 
 
 All monopo- 
 lies, &c., shall 
 be void. 
 
 Monopolies, 
 &c., shall be 
 tried by the 
 common laws 
 of this realm. 
 
 present Parliament, ttat all monopolies, and all commissions, 
 grants, licences, charters, and letters patent heretofore made 
 or granted, or hereafter to be made or granted, to any person 
 or persons, bodies politic or corporate whatsoever, of or for 
 the sole buying, selling, making, working, or nsing of any- 
 thing within this realm or the dominion of Wales, or of any 
 other monopolies, or of power, liberty, or faculty to dispense 
 with any others, or to give licence or toleration to do, nse, or 
 exercise anything against the tenor or purport of any law or 
 statute ; or to give or make any warrant for any such dis- 
 pensation, licence, or toleration to be had or made ; or to 
 agree or compound with any others for any penalty 'or for- 
 feitures limited by any statute ; or of any grant or promise 
 of the benefit, profit, or commodity of any forfeiture, penalty, 
 or sum of money that is or shall be due by any statute before 
 judgment thereupon had ; and all proclamations, inhibitions, 
 restraints, warrants of assistance, and all other matters and 
 things whatsoever, any way tending to the instituting, erect- 
 ing, strengthening, furthering, or countenancing of the same, 
 or any of them, are altogether contrary to the laws of this 
 realm, and so are and shall be utterly void and of none effect, 
 and in nowise to be put in use or execution. 
 
 II. That all monopolies, and all such commissions, grants, 
 licences, charters, letters patent, proclamations, inhibitions, 
 restraints, warrants of assistance, and all other matters and 
 things tending as aforesaid, and the force and validity of 
 them, and of every of them, ought to be and shall be for ever 
 hereafter examined, heard, tried and determined, by and 
 according to the common laws of this realm, and not other- 
 
 All persons 
 disabled to use 
 monopolies, 
 &c. 
 
 III. And be it enacted by the authority aforesaid that aU 
 person and persons, bodies politic and corporate whatsoever, 
 which now are or hereafter shall be, shall stand and be dis- 
 abled, and uncapable to have, use, exercise, or put in use any 
 monopoly, or any such commission, grant, licence, charter, 
 letters patent, proclamation, inhibition, restraint, warrant of 
 assistance or other matter or thing tending as aforesaid, or 
 
STATUTES 21 JAC. 1, c. 3. 347 
 
 any liberty, power or faculty grounded or pretended to be 
 
 grounded upon them, or any of them. 
 
 IV. And be it further enacted by the authority aforesaid, The party 
 
 that if any person or persons at any time after the end of |^^xt o/a 
 
 forty days next after the end of this present session of parlia- monopoly, &c., 
 
 1.-1T 1T1T 1. . *"*^' recover 
 
 ment shall be hindred, grieved, disturbed, or disquieted, or treble damages 
 
 his or their goods or chattels any way seized, attached, dis- c"gts 
 
 trained, taken, carried away, or detained by occasion or 
 
 pretext of any monopoly, or of any such commission, grant, 
 
 licence, power, liberty, faculty, letters patent, proclamation, 
 
 inhibition, restraint, warrant of assistance, or other matter or 
 
 thing tending as aforesaid, and will sue to be reliered in or 
 
 for any of the premises, that then and in every such case the 
 
 same person and persons shall and may have his and their 
 
 remedy for the same at the common law by any action or 
 
 actions to be grounded upon this statute ; the same action 
 
 and actions to be heard and determined in the courts of 
 
 King's Bench, Common Pleas, and Exchequer, or in any of 
 
 them, against him or them by whom he or they shall be so 
 
 hindered, grieved, disturbed, or disquieted, or against bun or 
 
 them by whom his or their goods or chattels shall be so 
 
 seized, attached, distrained, taken, carried away, or detained ; 
 
 wherein all and every such person and persons which shall 
 
 be so hindred, grieved, disturbed, or disquieted, or whose 
 
 goods or chattels shall be so seized, attached, distrained, 
 
 taken, carried away, or detained, shall recover three times so 
 
 much as the damages which he or they sustained by means or 
 
 occasion of being so hindred, grieved, disturbed, or disquieted, 
 
 or by means of having his or their goods or chattels seized, 
 
 attached, distrained, taken, carried away or detained, and 
 
 double costs ; and in such suits, or for the staying or delaying 
 
 thereof, no essoign, protection, wager of law, aid, prayer, 
 
 privilege, injunction, or order of restraint shall be in any 
 
 wise prayed, granted, admitted, or allowed, nor any more He that de- 
 
 than one imparlance : and if any person or persons shall, after '*y?tli an 
 
 notice given that the action depending is grounded upon this ed upon this 
 
 statute, cause or procure any action at the common law ^ priemunlref 
 
348 
 
 STATUTES 21 JAC. 1, C. 3, 
 
 16 R. II. c. 5. 
 
 Letters patent 
 before then 
 gi-anted to use 
 new manufac- 
 tures sared. 
 
 What new 
 patents to be 
 good. 
 
 grounded upon this statute to be stayed or delayed before 
 judgment by colour or means of any order, warrant, power, 
 or authority, save only of the court wherein such action as 
 aforesaid shall be brought and depending, or after judgment 
 had upon such action shall cause or procure the execution of 
 or upon any such judgment to be stayed or delayed by colour 
 or means of any order, warrant, power, or authority, save 
 only by writ of error or attaint ; that then the said person 
 and persons so offending shall incur and sustaia the pains, 
 penalties, and forfeitures ordained and provided by the 
 statute of provision and prcemunire made in the sixteenth 
 year of the reign of King Richard the Second. 
 
 V. Provided, nevertheless, that any declaration before men- 
 tioned shall not extend to any letters patent, and grants of 
 privileges for the term of one-and-twenty years or under, 
 heretofore made of the sole working or making of any manner 
 of new manufacture 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, BO they be not contrary to the law nor mischievous 
 to the State by raising of the prices of commodities at home, 
 or hurt of trade, or generally inconvenient, but that the same 
 shall be of such force as they were or should be if this act had 
 not been made, and of none other. And if the same were 
 made for more than one-and-twenty years, that then the same 
 for the term of one-and-twenty years only, to be accounted 
 from the date of the first letters patents and grants thereof 
 made, shall be of such force as they were, or should have 
 been if the same had been made but for the term of one-and- 
 twenty years only, and as if this act had never been had or 
 made and of none other. 
 
 YI. Provided also, and be it declared and enacted, that any 
 declaration before mentioned shall not extend to any letters 
 patent, 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 manu- 
 
STATUTES 21 JAC. 1, c. 3. 349 
 
 factures which others at the time of making such letters 
 patent and grants shall not use, so as also they be not con- 
 trary to the law, nor mischievous to the state, by raising prices 
 of commodities at home or hurt of trade, or generally incon- 
 venient; the said fourteen years to be accounted from the 
 date of the first letters patent or grants 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. 
 
 VII. Provided also, and it is hereby further enacted, declared, Act not to 
 and enacted by authority, that this act or anything therein ™ants con- 
 contained, shall not in anywise extend or be prejudicial to any fi™ed by Act 
 grant or privilege, power, or authority whatsoever heretofore 
 
 made, granted, allowed, or confirmed by any act of parliament 
 now in force, so long as the same shall so continue in force. 
 
 VIII. Provided also, that this act shall not extend to any warrants 
 
 warrant or privy seal made or directed, or to be made or F^'^"^*" , 
 ^ •' _ ' _ justices saved. 
 
 directed by his Majesty, his heirs, or successors to the justices 
 of the courts of the King's Bench or Common Pleas, and 
 Barons of the Exchequer, justices of assizes, justices of oyer 
 and terminer and gaol delivery, justices of the peace, and 
 other justices for the time being, having power to hear and 
 determine ofiences done against any penal statute, to com- 
 pound for the forfeitures of any penal statute depending in 
 suit and question before them, or any of them respectively, 
 after plea pleaded by the party defendant. 
 
 IX. Provided also, and it is hereby further intended. Charters 
 declared, and enacted, that this act, or anything therein con- corporations 
 tained, shall not in anywise extend or be prejudicial unto the saved. 
 City of London, or to any city, borough, or town corporate 
 
 within this realm, for or concerning any grants, charters, or 
 letters patent to them, or any of them made or granted, or 
 for or concerning any custom or customs used by or within 
 them or any of them ; or unto any corporations, companies, 
 or fellowships of any art, trade, occupation, or mystery, 
 or to any companies or societies of merchants within this 
 realm erected for the maintenance, enlargement, or ordering 
 
350 STATUTES 21 JAC. 1, C. 3. 
 
 of any trade of merchandize ; but that the same charters, 
 customs, corporations, companies, fellowships, and societies, 
 and their liberties, privileges, powers, and immunities, shall 
 be and continue of such force and effect as they were before 
 the making of this act, and of none other ; anything before 
 this in this act contained to the contrary in any wise not- 
 withstanding. 
 Letters patent X. Provided also, and be it enacted that this act, or any 
 printing salt- declaration, provision, disablement, penalty, forfeiture, or 
 petre, gun- other thing before mentioned, shall not extend to any letters 
 ordnance, shot, patent or grants of privileges heretofore made, or hereafter to 
 or offices, ^g made of, for, or concerning printing, nor to any commission 
 
 grant, or letters patent heretofore made or hereafter to be 
 made of, for, or concerning the digging, making or compound- 
 ing of saltpetre or gunpowder ; or the casting or making of 
 ordnance, or shot for ordnance ; nor to any grant or letters 
 patent heretofore made, or hereafter to be made, of any office 
 or offices heretofore erected, made, or ordained, and now in 
 being ; and put in execution, other than such offices as have 
 been decried by any of his Majesty's proclamation or pro- 
 clamations; but that all and every the same grants, com- 
 missions, and letters patent, and all other matters and things 
 tending to the maintaining, strengthening, and furtherance of 
 the same or any of them, shall be and remain of the like force 
 and effect, and no other, and as free from the declarations, 
 provisions, penalties, and forfeitures contained in this act, as 
 if this act had never been had nor made, and not otherwise. 
 
 XI. This act shall not extend to commissions for alum 
 mines. 
 
STATUTES 5 & 6 WILL. IV. c. 83. 351 
 
 5 & 6 Will. IY. c. 83. 
 
 An Act to amend the Law touching Letters Patent for 
 Inventions. [10th Sept. 1835.] 
 
 WHEREAS it is expedient to make certain additions to 
 and alterations in the present law touching letters 
 patent for inventions, as well as for the better protecting of 
 patentees in the rights intended to be secured by such letters 
 patent, as for the more ample benefit of the public for the 
 same ; be it enacted, 
 
 I. That any person who as grantee, assignee, or otherwise. Any person 
 hath obtained or shall hereafter obtain letters patent, for the takielf letters 
 sole making, exercising, vending, or using of any invention, patent for any 
 may, if he think fit, enter with the clerk of the patents of enter a dis- 
 England, Scotland or Ireland, respectively, as the case may claimer of any 
 be, having first obtained the leave of His Majesty's Attorney- specification, 
 General or Solicitor- General in case of an English patent, of "andum'of'any 
 the Lord Advocate or Solicitor- General of Scotland in case of alteration 
 
 TT- -••- • ,1 r^ 1 therem, ■wnicn, 
 
 a Scotch patent, or of His Majesty s Attorney- General or when filed, to 
 
 Solicitor- General for Ireland in the case of an Irish patent, of fuXsteci^ 
 
 certified by his fiat and signature, a disclaimer of any part of cation. Cayeat 
 
 either the title of the invention or of the specification, stating tered as here- 
 
 the reason for such disclaimer, or may, with such leave as to^e. Dis- 
 
 aforesaid, enter a memorandum of any alteration in the said affect actions 
 
 title or specification, not being such disclaimer or such altera- time.^^tty.-" 
 
 tion as shall extend the exclusive right granted by the said Gen. may re- 
 
 , - . , . T „ , qnu'e adver- 
 
 letters patent ; and such disclaimer or memorandum of altera- tisement of 
 
 tion, being filed by the said clerk of the patents, and enrolled "i'sclaimer. 
 with the specification, shall be deemed and taken to be part of 
 such letters patent or such specification in all courts what- 
 ever : Provided always, that any person may enter a ca/veat 
 in like manner as caveats are now used to be entered, against 
 such disclaimer or alteration ; which cmeat being so entered 
 shall give the party entering the same a right to have notice 
 
352 STATUTES 5 & 6 WILL. IV. c. 83. 
 
 of the application being heard by the Attorney- General or 
 Solicitor- General or Lord Advocate respectively: Provided 
 also, that no such "disclaimer or alteration shall be receivable 
 in evidence in any action or snit (save and except in any pro- 
 ceeding by sovre facias) pending at the time when such dis- 
 claimer or alteration was enrolled, but ia every such action or 
 suit the original title and specification alone shall be given in 
 evidence, and deemed and taken to be the title and specifica- 
 tion of the invention for which the letters patent have been 
 or shall have been granted: Provided also, that it shall be 
 lawful for the Attorney-General, or Solicitor- General, or Lord 
 Advocate, before granting such fiat, to require the party ap- 
 plying for the same to advertise his disclaimer or alteration 
 in such manner as to such Attorney- General or Solicitor- 
 General or Lord Advocate shall seem right, and shall, if he 
 so require such advertisement, certify in his fiat that the same 
 has been duly made. 
 Mode of pro- II. That if in any suit or action it shall be proved or spe- 
 
 patentfel^not ^'^^^^^ ^onuA. by the verdict of a jury, that any person who 
 the real in- shall have obtained letters patent for any invention, or sup- 
 
 ventor, though . i i r. ■ i n « 
 
 he belieTed posed mvention, was not the first inventor thereof, or of some 
 himself to be. ^^^ thereof, by reason of some other person or persons 
 having invented or used the same, or some part thereof, be- 
 fore the date of such letters patent, or if such patentee or his 
 assigns shall discover that some other person had, unknown 
 to such patentee, invented or used the same, or some part 
 thereof, before the date of such letters patent, it shaU and 
 may be lawful for such patentee or his assigns to petition His 
 Majesty in council to confirm the said letters patent or to 
 grant new letters patent, the matter of which petition shall 
 be heard before the Judicial Committee of the Privy Council ; 
 and such committee, upon examining the said matter, and 
 being satisfied that such patentee believed himself to be the 
 first and original inventor, and being satisfied that such in- 
 vention, or part thereof, had not been publicly and generally 
 used before the date of such first letters patent, may report to 
 His Majesty their opinion that the prayer of such petition 
 
STATUTES 5 & 6 WILL. IV. c. 83. 353 
 
 ougM to be complied with, whereupon His Majesty may, if 
 he think fit, grant such prayer ; and the said letters patent 
 shall be available in law and equity to give such petitioner 
 the sole right of using, making, and vending such inven- 
 tion as against all persons whatsoever, any law, usage, or 
 custom to the contrary thereof notwithstanding : Provided, 
 that any person opposing such petition shall be entitled to be 
 heard before the said Judicial Committee : Provided also, that 
 any person, party to any former suit or action touching such 
 first letters patent, shall be entitled to have notice of such 
 petition before presenting the same. 
 
 III. That if any action at law or any suit in equity for an If in any action 
 
 account shall be brought in respect to any alleged infriage- gjjjjy p^gg fo/' 
 
 ment of such letters patent heretofore or hereafter granted, or *^^ patentee, 
 
 ° the judge may 
 
 any scvre -facias to repeal such letters patent, and if a verdict grant a certifi- 
 
 shaU pass for the patentee or his assigns, or if a final decree ''***' 
 or decretal order shall be made for him or them, upon the 
 merits of the suit, it shall be lawful for the judge before whom 
 such action shall be tried to certify on the record, or the 
 judge who shall make such decree or order, to give a certifi- 
 cate under his hand, that the validity of the patent came in 
 question before him., which record or certificate being given in 
 evidence in any other suit or action whatever touching such 
 patent, if a verdict shall pass, or decree or decretal order be 
 made, in favour of such patentee or his assigns, he or they 
 shall receive treble costs ia such suit or action to be taxed at 
 three times the taxed costs, unless the judge making such 
 second or other decree or order, or trying such second or 
 other action shall certify that he ought not to have such 
 treble costs. 
 
 IV. That if any person who now hath or shall hereafter Mode of pro- 
 obtain any letters patent as aforesaid shall advertise in the "^^"l'"? m case 
 "London Grazette " three times, and in three London papers, forthepro- 
 ajad three times in some country papers published in the town the^teraTof a 
 where or near to which he carried on any manufacture of any- patentee, 
 thing made according to his specification, or near to or in 
 
 which he resides in case he carried on no such manufacture, 
 
 A A 
 
354 STATUTES 5 & 6 WILL. IV, c. 83. 
 
 or published in the county where he carries on such mamifac- 
 tnre or where he lives in case there shall not be any paper 
 published in such town, that he intends to apply to His 
 Majesty in council for a prolongation 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 ca/veat at the council ofBce ; 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 ccuoeats, 
 the petitioner shall be heard by his counsel and witnesses to 
 prove his case, and the persons entering ca/veats shall likewise 
 be heard by their counsel and witnesses ; whereupon and upon 
 hearing and inquiring of the whole matter, the Judicial Com- 
 mittee 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 authorized 
 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 : Provi- 
 ded 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, (as) 
 In case of V. That in any action brought against any person for in- 
 
 action, &c., fringing any letters patent the defendant on pleading thereto 
 tions to be shall give to the plaintiff, and in any scire facias to repeal such 
 given. letters patent the plaintiff shall file with his declaration, a 
 
 notice of any objection on which he means to rely at the trial 
 of such action, and no objection shall be allowed to be made 
 in behalf of such defendant or plaintiff respectively at such 
 trial unless he prove the objections stated in such notice : 
 Provided always, that it shall and may be lawful for any 
 judge at chambers, on summons served by such defendant 
 
 (a) This proviso is repealed by 2 & 3 Vict. c. 67, s. 1. 
 
STATUTES 5 & 6 WILL. IV. c. 83. 355 
 
 or plaintiff on sucb. plaintiff or defendant respectively to show 
 cause why he should not be allowed to offer other objections 
 whereof notice shall not have been given as aforesaid, to give 
 leave to offer such objections, on such terms as to such judge 
 shall seem fit. 
 
 VI. That in any action brought for infringing the right As to costs in 
 granted by any letters patent, in taxing the costs thereof regard 6^^ letters 
 shall be had to the part of such case which has been proved patent. 
 
 at the trial, which shall be certified by the judge before whom 
 the same shall be had, and the costs of each part of the case 
 shall be given according as either party has succeeded or 
 failed therein, regard being had to the notice of objections as 
 well as the counts in the declaration, and without regard to 
 the general result of the trial. 
 
 VII. That if any person shall write, paint, or print, or Penalty for 
 mould, cast, or carve, or engrave or stamp upon anything ^^eif thTname 
 made, used or sold by him, for the sole making or selling of of a patentee, 
 which he hath not or shall not have obtained letters patent, 
 
 the name or any imitation of the name of any other person 
 who hath or shall have obtained letters patent, for the sole 
 making and vending of such thing, without leave in writing 
 of such patentee or his assigns, or if any person shall upon 
 such thing, not having been purchased from the patentee or 
 some person who purchased it from or under such patentee, 
 or not having had the license or consent in writing of such 
 patentee, or his assigns, write, paint, print, mould, cast, carve, 
 engrave, stamp, or otherwise' mark the word " patent," the 
 words "letters patent," or the words "by the king's patent," 
 or any words of the like kind, meaning, or import, with a view 
 of imitating or counterfeiting the stamp, mark, or other device 
 of the patentee, or shall in any other manner imitate or counter- 
 feit the stamp or mark or other device of the patentee, he 
 shall for every such offence be liable to a penalty of £50, to 
 be recovered by action of debt, bill, plaint, process, or infor- 
 mation in any of His Majesty's courts of record at Westminster 
 or in Ireland, or in the court of session in Scotland, one half 
 to His Majesty, his heirs and successors, and the other to any 
 
356 STATUTES 2 & 3 VICT. c. 67. 
 
 person who shall sue for the Bame : Provided always, that 
 nothing herein contained shall be construed to extend to subject 
 any person to any penalty ia respect of stamping or in any 
 way marking the word " patent " upon anything made, for the 
 sole making or vending of which a patent before obtained 
 shall have expired. 
 
 2 & 3 YiCT. c. 67. 
 
 An Act to amend an Act of the Fifth and Sixth Years of 
 the Beign of King William the Fourth, intituled an Act 
 to Amend the Law touching Letters Patent for Inven- 
 tions. [24th August, 1839.] 
 
 WHEEEAS by an act passed in the fifth and sixth, years 
 of the reign of His Majesty King William the Fourth, 
 intituled " An Act to amend the Law touching Letters Patent 
 for inventions," it is amongst other things enacted (reciting 
 s. 4 of the said act) : And whereas it has happened since the 
 passing of the said act, and may again happen, that parties 
 desirous of obtaining an extension of the term granted in 
 letters patent of which they are possessed, and who may have 
 presented a petition for such purposes in manner by the said 
 recited act directed, before the expiration of the said term, 
 may nevertheless be prevented by causes over which they 
 have no control from prosecuting with effect their application 
 before the Judicial Committee of the Privy CouncU ; and it 
 is expedient therefore that the said Judicial Committee should 
 have power, when under the circumstances of the case they 
 shall see fit, to entertain such application, and to report 
 thereon, according to the provisions of the said recited act, 
 notwithstanding that before the hearing of the case before 
 them the terms of the letters patent sought to be renewed or 
 extended may have expired ; be it therefore enacted, 
 Repealing pro- I. That SO much of the said recited act as provides that no 
 
 vision re- 
 
STATUTES 2 & 3 VICT. c. 67. 357 
 
 extension of the term of letters patent shall be granted as quiring the 
 
 therein mentioned if the application by petition for such ex- pitition to be 
 
 tension be not prosecuted with effect before the expiration of P'^'J^f*' '^^'J 
 
 the term originally granted in snch letters patent, shall be before the ex- 
 
 and the same is hereby repealed. term'of the * 
 
 II. That it shall be lawful for the Judicial Committee of patent. 
 
 the Privy Council, in all cases where it shall appear to them ^^^ma^'T"* 
 
 that any application for an extension of the term granted by extended in 
 
 any letters patent, the petition for which extension shall have though the ' 
 
 been referred to them for their consideration, has not been application for 
 
 , , such extension 
 
 prosecuted with effect before the expiration of the said term not prosecuted 
 
 from any other causes than the neglect or default of the JJ^et^^^pi- 
 petitioner, to entertain such application and to report thereon ration thereof, 
 as by the said recited act provided, notwithstandiug the term 
 originally granted in such letters patent may have expired 
 before the hearing of such application ; and it shall be lawful 
 for Her Majesty, if she shall think fit, on the report of the 
 said Judicial Committee recommendiug an extension of the 
 term of such letters patent to grant such extension or to 
 grant new letters patent for the invention or inventions 
 specified in such original letters patent, for a term not ex- 
 ceeding seven years after the expiration of the term men- 
 tioned in the said original letters patent : Provided always, 
 that no such extension or new letters patent shall be granted 
 if a petition for the same shall not have been presented as by 
 the said recited act directed before the expiration of the term 
 sought to be extended, nor in case of petitions presented after 
 the 30th day of November, 1839, unless such petition shall 
 be presented six calendar months at the least before the ex- 
 piration of such term, nor in any case unless sufficient reason 
 shall be shown to the satisfaction of the said Judicial Com- 
 mittee for the omission to prosecute with effect the said appli- 
 cation by petition before the expiration of the said term. 
 
358 
 
 STATUTES 7 & 8 VICT. C. 69. 
 
 On petition, 
 Her Majesty 
 may gi-ant an 
 extension of 
 patent term in 
 ceitain cases. 
 
 7 & 8 Vict, c, 69. 
 
 An Act for amending cm Act passed in the Fourth Tear of 
 the Reign of His late Majesty, intituled An Act for the 
 better Ad/mlnistraUon of Justice in His Majesty's Privy 
 Council ; and to extend its Jurisdiction and Powers. 
 
 [6tli August, 1844.] 
 
 WHEREAS the act passed in tlie fourth year of the 
 reign of his late Majesty, intituled " An Act for the 
 better Administration of Justice in His Majesty's Privy 
 CouncU " hath been found beneficial to the due administra- 
 tion of justice : And whereas another Act, passed in the sixth 
 year of the said reign intituled " An Act to amend the Law 
 touching Letters Patent for Inventions " hath also been found 
 advantageous to inventors and to the public. 
 
 II. And whereas it is expedient, for the further encourage- 
 ment of inventions ia the useful arts, to enable the time of 
 monopoly in patents to be extended in cases ia which it can 
 be satisfactorily shown that the expense of the invention hath 
 been greater than the time now limited by law will suffice to 
 reimburse ; be it enacted, that if any person, having obtained 
 a patent for any invention, shall before the expiration thereof 
 present a petition to her Majesty iu Council, setting forth 
 that he has been unable to obtain a due remuneration for his 
 expense and labour in perfecting such invention, and that an 
 exclusive right of using and vending the same for the further 
 period of seven years, in addition to the term in such patent 
 mentioned, will not suffice for his reimbursement and remu- 
 neration, then if the matter of such petition shall be by her 
 Majesty referred to the Judicial Committee of the Privy 
 Council, the said committee shall proceed to consider the 
 same after the manner and in the usual course of its proceed- 
 ings touching patents, and if the said committee shall be of 
 opinion, and shall so report to her Majesty, that a further 
 period greater than seven years' extension of the said patent 
 term ought to be granted to the petitioner, it shall be lawful 
 for her Majesty, if she shall so think fit, to grant an exten- 
 
STATUTES 7 & 8 VICT. c. 69. 359 
 
 sion thereof for any time not exceeding fourteen years, in like 
 manner and subject to the same rules as the extension for a 
 term not exceeding seven years is now granted under the 
 powers of the said act of the sixth year of the reign of his 
 late Majesty. 
 
 III. Provided always, that nothing herein contained shall Her Majesty- 
 prevent the said Judicial Committee from reporting that an ^^eiSon for a 
 extension for any period not exceeding seven years should be lesser term 
 granted, or prevent her Majesty from granting an extension prayed, 
 for such lesser term than the petition shall have prayed. 
 
 lY. And whereas doubts have arisen touching the power As to exten- 
 given by the said recited Act of the sixth year of the reign of -^yhere pa- 
 
 his late Maiesty, in cases where the patentees have wholly or tenteesTiaye 
 
 ■' •" _ ■'• _ '' assigned their 
 
 in part assigned their right ; be it enacted, that it shall be patent rights. 
 
 lawful for her Majesty, on the report of the Judicial Committee, 
 to grant such extension as is authorized by the said Act, and 
 by this Act, either to an assignee or assignees, or to the ori- 
 ginal patentee or patentees, or to an assignee or assignees and 
 original patentee or patentees conjointly. 
 
 V. That in case the original patentee or patentees hath or Disclaimer and 
 have departed with his or their whole or any part of his or of alteration 
 their interest by assignment to any other person or persons, w*^?^^ ^^c, 
 it shall be lawful for such patentee, together with such as- may be made, 
 signee or assignees, if part only hath been assigned, and for ^g^riJ^al ' 
 the assignee or assignees if the whole hath been assigned, to patentee may 
 enter a disclaimer and memorandum of alteration under the his patent 
 powers of the said recited Act; and such disclaimer and "S™- 
 memorandum of alteration, having been so entered and filed 
 
 as in the said recited Act mentioned, shall be valid and effec- 
 tual in favour of any person or persons in whom the rights 
 under the said letters patent may then be or thereafter become 
 legally vested ; and no objection shall be made in any pro- 
 ceeding whatsoever, on the ground that the party making 
 such disclaimer or memorandum of alteration had not suffi- 
 cient authority in that behalf. 
 
 VI. That any disclaimer or memorandum of alteration Disclaimer and 
 before the passing of this Act, or by virtue of the said recited memorandum 
 
360 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 of alteration 
 already made 
 valid. 
 
 New letters 
 patent granted 
 under 5 & 6 
 W. IV. c. 83, 
 to assignees 
 before passing 
 of this act de- 
 clared valid. 
 
 Proviso. 
 
 Act, by such patentee with sxich. assignee, or by such assignee 
 as aforesaid, shall be valid and efiFeotnal to bind any person 
 or persons ia whom the said letters patent might then be or 
 have siace become vested ; and no objection shall be made in 
 any proceeding whatsoever that the party making such dis- 
 claimer or memorandum of alteration had not authority in that 
 behalf. 
 
 VII. That any new letters patent which before the passing 
 of this Act may have been granted under the provisions of 
 the above recited Act of the sixth year of the reign of his late 
 Majesty to an assignee or assignees, shall be as valid and 
 effectual as if the said letters patent had been made after the 
 passing of this Act, and the title of any party to such new 
 letters patent shall not be invalidated by reason of the same 
 having been granted to any assignee or assignees : Provided 
 always, that nothing herein contained shall give any validity 
 or effect to any letters patent heretofore granted to any as- 
 signee or assignees where any action or proceeding in scire 
 facias or suit in equity shall have been commenced at any 
 time before the passing of this Act, wherein the validity of 
 such letters patent shall have been or may be questioned. 
 
 Certain per- 
 sons con- 
 
 15 & 16 Vict. c. 83. 
 
 An Act for Amenddng the Law for Chanting Patents for 
 Inventions. [7th. July, 1852.] 
 
 WHEEEAS it is expedient to amend the law concerning 
 letters patent for inventions: Be it enacted by the 
 Queen's most excellent Majesty, by and with the advice and 
 consent of the Lords Spiritual and Temporal, and Commons in 
 this present Parliament assembled, and by the authority of 
 the same, as follows : 
 
 I. The Lord Chancellor, the Master of the Rolls, her 
 Majesty's Attorney- General for England, her Majesty's 
 
STATUTES 15 & 16 VICT. c. 83. 361 
 
 Solicitor- General for England, the Lord Advocate, Her Ma- stituted Com- 
 jesty's Solicitor- General for Scotland, her Majesty's Attorney- Patents'for" 
 General for Ireland, and her Maiesty's Solicitor- General for Inventions, 
 
 TiToi ■ 7- -T 1 ■ t T three of whom 
 
 Ireland, for the tune being respectively, together with such may act, the 
 other person or persons as may be from time to time appointed m t*^- rf the 
 by her Majesty, as hereinafter mentioned, shall be Commis- Rolls being 
 sioners of Patents for inventions ; and it shall be lawful for 
 her Majesty from time to time, by warrant under her royal 
 sign manrial, to appoint such other person or persons, as she 
 may think fit, to be a commissioner or commissioners as 
 aforesaid ; and every person so appointed shall continue such 
 commissioner during her Majesty's pleasure ; and all the 
 powers hereby vested in the commissioners may be exercised 
 by any three or more of them, the Lord Chancellor or Master 
 of the Rolls beiag one. 
 
 II. It shall be lawful for the commissioners to cause a seal Seal of the 
 to be made for the purposes of this Act, and from time to ers. 
 time to vary such seal, and to cause to be sealed therewith all 
 
 the warrants for letters patent under this Act, and all instru- 
 ments and copies proceeding from the office of the commis- 
 sioners ; and all courts, judges, and other persons whomsoever 
 shall take notice of such seal, and receive impressions thereof 
 in evidence, in like manner as impressions of the Great Seal 
 are received in evidence, and shall also take notice of and 
 receive in evidence, without farther proof or production of 
 the originals, all copies or extracts, certified under the seal of 
 the said office, of or from documents deposited in such office. 
 
 III. It shall be lawful for the commissioners from time to Commission- 
 time to make such rules and regulations (not inconsistent rules'a^dreffu- 
 with the provisions of this Act) respecting the business of lations -which 
 their office, and all matters and things which under the pro- before Parlia- 
 visions herein contained are to be under their control and ™^''*- 
 direction, as may appear to them necessary and expedient for 
 
 the purposes of this Act ; and all such rules shall be laid 
 before both Houses of Parliament within fourteen days after 
 the making thereof, if Parliament be sitting, and if Parlia- 
 ment be not sitting, then within fourteen days after the next 
 
362 
 
 STATUTES 15 & 16 VICT, C. 83. 
 
 Treasury to 
 proTide offices. 
 
 Commission- 
 ers, with 
 consent of 
 Treasury, to 
 appoint clerks, 
 &c. 
 
 Petition and 
 declaration to 
 be accom- 
 panied "with a 
 provisional 
 specification. 
 
 Applications 
 to be refeiTed 
 to law officer. 
 
 The proTi- 
 sional specifi- 
 cation to be 
 referred to the 
 law officer, 
 who, if satis- 
 fied, may give 
 
 meeting of Parliament ; and the commissioners stall canse a 
 report to be laid annually before Parliament of all tbe pro- 
 ceedings under and in pursuance of this Act. 
 
 IV. It shall be lawful for the Commissioners of her 
 Majesty's Treasury to provide and appoint from time to time 
 proper places or buildings for an office or offices for the pur- 
 poses of this Act. 
 
 V. It shall be lawful for the commissioners with the con- 
 sent of the Commissioners of the Treasury, from time to time 
 to appoint for the purposes of this Act such clerks and 
 officers as the commissioners may think proper : and it shall 
 be lawful for the commissioners from time to time to remove 
 any of the clerks and officers so appointed. 
 
 VI. Every petition for the grant of letters patent for an 
 invention,' and the declaration required to accompany such 
 petition, shall be kept at the office of the commissioners, and 
 there shall be left therewith a statement in writing, herein- 
 after called the provisional specification, signed by or on 
 behalf of the applicant for letters patent, describing the nature 
 of the said invention ; and the day of the delivery of every 
 such petition, declaration, and provisional specification shall 
 be recorded at the said office, and endorsed on such petition, 
 declaration, and provisional specification, and a certificate 
 thereof given to such applicant or his agent ; and all such 
 petitions, declarations and provisional specifications shall be 
 preserved in such manner as the commissioners may direct, 
 and a registry thereof, and of all proceedings thereon, kept at 
 the office of the commissioners. 
 
 VII. Every application for letters patent made under this 
 Act shall be referred by the commissioners, according to such 
 regulations as they may think fit to make, to one of the law 
 officers. 
 
 VIII. The provisional specification shall be referred to the 
 law officer, who shall be at liberty to call to his aid such 
 scientific or other person as he may think fit, and to cause to 
 be paid to such person by the applicant such remuneration as 
 the law officer shall appoint ; and if such law officer be satis- 
 
STATUTES 15 & 16 VICT. c. 83. 363 
 
 fied that the provisional specification describes the nature of a certificate of 
 the iiiTention, he shall allow the same, and give a certificate •„rhich°8haU*'be 
 of his allowance, and such certificate shall be filed in the filed. 
 oflBce of the commissioners, an.d thereupon the invention 
 therein referred to may, during the term of six months from 
 the date of the application for letters patent for the said in- 
 vention, be used and published without prejudice to any 
 letters patent to be granted for the same, and such protection 
 from the consequences of use and publication is hereinafter 
 referred to as provisional protection : Provided always that in 
 case the title of the invention or the provisional specification 
 be too large or insufficient, it shall be lawful for the law 
 officer to whom the same is referred to allow or require the 
 same to be amended. 
 
 IX. The applicant for letters patent for an invention in- Inventor may 
 stead of leaving with the petition and declaration a pro- olaprovisional 
 
 visional specification as aforesaid, may, if he think fit, file specification, a 
 ., .. inn • • • ■• complete speci- 
 
 with the said petition and declaration an m.strument in writing fication, such 
 
 under his hand and seal (hereinafter called a complete speci- fer^for'lihtdted 
 fication) particularly describing and ascertaining the nature time the like 
 of the said invention, and in what manner the same is to be pSent. 
 performed, which complete specification shall be mentioned in 
 such declaration, and the day of the delivery of every such 
 petition, declaration, and complete specification, shall be re- 
 corded at the office of the commissioners, and endorsed on 
 such petition, declaration and specification, and a certificate 
 thereof given to such applicant or his agent, and thereupon, 
 subject and without prejudice to the provisions hereinafter 
 contained, the invention shall be protected under this Act for 
 the term of sis months from the date of the application, and 
 the applicant shall have during such term of six months the 
 like powers, rights, and privileges as might have been con- 
 ferred upon him by letters patent for such invention, issued 
 under this Act, and duly sealed as of the day of the date of 
 such application ; and during the continuance of such powers, 
 rights and privileges under this provision such invention may 
 be used and published without prejudice to any letters patent 
 
364 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Letters patent 
 
 f ranted to the 
 rst inventor 
 not to be in- 
 validated by 
 protection 
 obtained in 
 fraud of the 
 first inventor. 
 
 Commissioners 
 to cause pro- 
 tections to be 
 advertised. 
 
 Application for 
 letters patent 
 to be adver- 
 tised, and also 
 oppositions to 
 the same. 
 
 to be granted for the same ; and where letters patent are 
 granted in respect of such inTcntion, then in lien of a condi- 
 tion for making void such letters patent in case such inven- 
 tion be not described and ascertained by a subsequent speci- 
 fication, such letters patent shall be conditioned to become 
 void if such complete specification, filed as aforesaid, does not 
 particularly describe and ascertain the nature of the said in- 
 vention, and in what manner the same is to be performed ; 
 and a copy of every such complete specification shall be open 
 to the inspection of the public, as hereiaafter provided, from 
 the time of depositing the same, subject to such regulations 
 as the commissioners may make, 
 
 X. In case of any application for letters patent for any 
 invention, and the obtaining upon such application of pro- 
 visional protection for such invention, or of protection for 
 the same, by reason of the deposit of a complete specification 
 as aforesaid in fraud of the true and first inventor, any 
 letters patent granted to the true and first inventor of such 
 invention shall not be invalidated by reason of such appli- 
 cation, or of such provisional or other protection as aforesaid, 
 or of any use or publication of the invention subsequent to 
 such application and before the expiration of the term of such 
 provisional or other protection, 
 
 XI. Where any invention is provisionally protected under 
 this Act, or protected by reason of the deposit of such com- 
 plete specification as aforesaid, the commissioners shall cause 
 such provisional protection or such other protection as afore- 
 said to be advertised in such manner as they may see fit. 
 
 XII. The applicant for letters patent, so soon as he may 
 think fit after the invention shall have been previously pro- 
 tected under this Act, or where a complete specification has 
 been deposited with his petition and declaration, then so soon 
 as he may think fit after such deposit, may give notice at the 
 office of the commissioners of his intention of proceeding with 
 his application for letters patent for the said invention,"and 
 thereupon the said commissioners shall cause his said appli- 
 cation to be advertised in such manner as they may see fit; 
 
STATUTES 15 & 16 VICT. c. 83. 365 
 
 and any persons having an interest in opposing the grant of 
 letters patent for the said invention shall be at liberty to 
 have particulars in writing of their objections to the said 
 application at such place, and within such time, and subject 
 to such regulations, as the commissioners may direct. 
 
 XIII. So soon as the time for the delivery of such objec- Specification 
 tions shall have expired, the provisional specification or tote°referred 
 complete specification (as the case may be), and particulars to law officer. 
 of objection (if any), shall be referred to the law oflScer to 
 
 whom the application has been referred. 
 
 XIV. It shall be lawful for the law officer to whom any Power to law 
 application for such letters patent is referred, if he see fit, by by or to whom 
 certificate under his hand, to order by or to whom the costs ""^^ ^^*^' '"' 
 of any hearing or inquiry upon any objection, or otherwise in 
 
 relation to the grant of such letters patent, or in relation to 
 the provisional (or other) protection acquired by the appli- 
 cant under this Act, shall be paid, and in what manner and 
 by whom such costs are to be ascertained ; and if any costs 
 so ordered to be paid be not paid within four days after the 
 amount thereof shall be so ascertained, it shall be lawful for 
 such law officer to make an order for the payment of the 
 same, and every such order may be made a rule of one of 
 Her Majesty's Superior Courts at Westminster or Dublin, 
 and may be recorded in the books of Council and Session in 
 Scotland to the effect that execution may pass thereupon in 
 common form. 
 
 XV. It shall be lawful for such law officer, after such Power to law 
 
 hearing, if any, as he may think fit, to cause a warrant to be ^ wmant^to be 
 
 made for the sealins: of letters patent for the said invention, made for seal- 
 
 f , ,■%.,, , ™ , mg of letters 
 
 and such warrant shall be sealed with the seal of the commis- patent. 
 
 sioners, and shall set forth the tenor and effect of the letters 
 
 patent thereby authorized to be granted, and such law officer 
 
 shall direct the insertion in such letters patent of all such 
 
 restrictions, conditions, and provisoes as he may deem usual 
 
 and expedient in such grants, or necessary in pursuance of 
 
 the provisions of this Act ; and the said warrant shall be the 
 
 warrant for the making and sealing of letters patent under 
 
366 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Chancellor to 
 have same 
 powei's in re- 
 spect to war- 
 rant, &c., as 
 he now has. 
 
 Writ of scire 
 facias. 
 
 Nothing to 
 affect the pre- 
 rogative of the 
 Crown in 
 granting or 
 withholding 
 gi-aut of letters 
 patent. 
 
 Letters patent 
 to be made 
 subject to 
 ayoidance on 
 non-fulfilment 
 of certain con- 
 ditions. 
 
 tMs Act according to the tenor of tlie said warrant : Pro- 
 vided always, that the Lord Chancellor shall and may have 
 and exercise snch powers, authority, and discretion in respect 
 to the said warrant, and the letters patent therein directed to 
 be made nnder this Act, as he now has and might now 
 exercise with respect to the warrant for the issue under the 
 Great Seal of letters patent for any invention and with 
 respect to the making and issuing of such letters patent ; and 
 the writ of scire facias shall lie for the repeal of any letters 
 patent issued nnder this Act, in the like cases as the same 
 would lie for the repeal of letters patent which may now be 
 issued under the Great Seal. 
 
 XVI. Provided also : That nothing herein contained shall 
 extend to abridge or affect the prerogative of the Crown in 
 relation to the granting or withholding the grant of any letters 
 patent ; and it shall be lawful for her Majesty, by warrant 
 under her royal sign manual, to direct such law officers to 
 withhold such warrant as aforesaid, or that any letters patent 
 for the issuing whereof he may have issued a warrant as 
 aforesaid shall not issue, or to direct the insertion in any 
 letters patent to be issued in manner herein provided of any 
 restrictions, conditions, or provisoes which her Majesty may 
 think fit in addition to or in substitution for any restriction, 
 conditions, or provisoes which would otherwise be inserted 
 therein under this Act ; and it shall also be lawful for her 
 Majesty, by like warrant, to direct any complete specification 
 which may have been filed under the provisions hereinbefore 
 contained, and in respect of the invention described in which 
 no letters patent may have been granted, to be cancelled, and 
 thereupon the protection obtained by the filing of such com- 
 plete specification shall cease. 
 
 XVII. All letters patent for inventions granted under the 
 provisions hereinbefore contained shall be made subject to the 
 condition that the same shall be void, and that the powers 
 and privileges thereby granted shall cease and determine, at 
 the expiration of three years and seven years respectively 
 from the date thereof, unless there be paid, before the expira- 
 
STATUTES 15 & 16 VICT. c. 83. 367 
 
 tion of the said three years and seven years respectively the 
 sum or sums of money and stamp duties in the schedule of 
 this Act annexed ; and the payment of the said sums of money 
 and stamp duties respectively shall be endorsed on the warrant 
 for the said letters patent ; and such officer of the commis- 
 sioners as may be appointed for this purpose shall issue under 
 the seal of the commissioners a certificate of such payment, 
 and shall endorse a receipt for the same on any letters patent 
 issued under the authority of the said warrant ; and such cer- 
 tificate, duly stamped, shall be evidence of the payment of the 
 several sums respectively, (a) 
 
 XVIII. The commissioners, so soon after the sealing of the Letters patent 
 said warrant as required by the applicant for the letters ^^ Qj.^at Seal 
 patent, shall cause to be prepared letters patent for the inven- *» ^^ ™}'<i ^'' 
 tion, according to the tenor of the said warrant, and it shall the United 
 be lawful for the Lord Chancellor to cause such letters patent channX' ^^^ 
 to be sealed with the great seal of the United Kingdom, and Islands, and 
 
 tliG I sis or 
 
 such letters patent so sealed shall extend to the whole of the Man. 
 United Kingdom of Great Britain and Ireland, the Channel 
 Islands and the Isle of Man ; and in case such warrant so 
 direct, such letters patent shall be made applicable to her 
 Majesty's colonies and plantations abroad, or such of them as 
 may be mentioned in such warrant ; and such letters patent 
 shall be valid and effectual as to the whole of such United 
 Kingdom and the said Islands and Isle, and the said colonies 
 or plantations or such of them as aforesaid, and shall confer 
 the like powers, rights and privileges as might in case this 
 Act had not been passed, have been conferred by several 
 letters patent of the like purport and efiiect passed under the 
 Grreat Seal of the United Kingdom under the Seal appointed 
 to be used instead of the Great Seal of Scotland, and under 
 the Great Seal of Ireland respectively, and made applicable to 
 England, the dominion of Wales, the town of Berwick-upon- 
 Tweed, the Channel Islands, and the Isle of Man, and the 
 said colonies and plantations, or such of them as aforesaid, 
 to Scotland and to Ireland respectively, save as herein other- 
 
 (a) This section is repealed by 16 & 17 Vict. c. 5. 
 
368 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Nothinff to 
 gire effect to 
 any letters 
 patent granted 
 m any colony. 
 
 Letters patent 
 not to be 
 issued after 
 three months 
 from date of 
 ■warrant. 
 
 No letters 
 patent (except 
 in lieu of those 
 lost, &e.) to be 
 issued after 
 expiration of 
 protection 
 giyen by this 
 Act. 
 
 wise provided : Provided always that nothing in this Act 
 contained shall be deemed or taken to give any effect or opera- 
 tion to any letters patent to be granted nnder the anthority 
 of this Act in any colony in which such or the like letters 
 patent would be invalid by the law in force in the same 
 colony for the time being : Provided always that a transcript 
 of snch letters shall, so soon after the sealing of the same and 
 in such manner as the commissioners shall direct, be trans- 
 mitted to the director of Chancery in Scotland, and be recorded 
 in the Records of Chancery in Scotland, upon payment of such 
 fees as the commissioners shall appoint, in the same manner 
 and to the same effect in all respects as letters patent passing 
 under the seal appointed by the treaty of union to be used in 
 place of the Great Seal of Scotland have heretofore been 
 recorded, and extrEicts from the said Records shall be furnished 
 to all parties requiring the same, on payment of such fees as 
 the commissioners shall direct, and shall be received in evi- 
 dence in all courts in Scotland to the like effect as the letters 
 patent themselves. 
 
 XIX. Provided always, that no letters patent, save as 
 hereinafter mentioned in the case of letters patent destroyed 
 or lost, shall issue on any warrant granted as aforesaid, 
 unless application be made to seal such letters patent within 
 three months after the date of the said warrant. 
 
 XX. Provided also, that no letters patent (save letters 
 patent issued in lieu of others destroyed or lost) shall be 
 issued or be of any force or effect unless the same be granted 
 during the continuance of the provisional protection under 
 this Act ; or, where a complete specification has been deposited 
 under this Act, then, unless such letters patent be granted 
 during the continuance of the protection conferred under 
 this Act by reason of such deposit, save that where the 
 application to seal such letters patent has been made during 
 the continuance of such provisional or other protection as 
 aforesaid, and the sealing of such letters patent has been 
 delayed by reason of a caveat or an application to the Lord 
 Chancellor against or in relation to the sealing of such letters 
 
STATUTES 15 & 16 VICT. c. 83. 369 
 
 patent, then such, letters patent may be sealed at such time as 
 the Lord Chancellor shall direct. 
 
 XXI. Provided also, that where the applicant for such Letters patent 
 letters patent dies during the continuance of the provisional toTeramm" 
 protection, or the protection by reason of the deposit of a representatives 
 complete specification (as the case may be), such letters dm-ing term of 
 patent may be granted to the executors or administrators of P'-tl^^H?*' *"" 
 such applicant during the continuance of such provisional or months after 
 other protection, or at any time within three months after the 
 
 death of such applicant, notwithstanding the expiration of 
 the term of such provisional or other protection, and the 
 letters patent so granted shall be of the like force and effect 
 as if they had been granted to such applicant during the con- 
 tinuance of such provisional or other protection. 
 
 XXII. Provided also, that in case any such letters patent Iflettera patent 
 shall be destroyed or lost, other letters patent of the like oriost otter 
 tenor and effect, and sealed and dated as of the same day, letters patent 
 may, subject to such regulations as the Commissioners may 
 
 direct, be issued under the authority of the warrant in pur- 
 suance of which the original letters patent were issued. 
 
 XXIII. It shall be lawful (the Act of the eighteenth Letters patent 
 year of King Henry the Sixth, chapter one, or any other Act ^*of the day 
 to the contrary notwithstanding), to cause any letters patent of the applica- 
 to be issued in pursuance of this Act to be sealed and bear 
 
 date as of the day of the application for the same, and in the 
 case of such letters patent for any invention provisionally 
 registered under the " Protection of Inventions Act, 1851," 
 as of the day of such, provisional registration, or, where the 
 law officer to whom the application was referred, or the Lord 
 Chancellor, thinks fit and directs, any such letters patent as 
 aforesaid may be sealed and bear date as of the day of sealing 
 of such letters patent, or of any other day between the day 
 of such application or provisional registration and the day of 
 such sealing. 
 
 XXIV. Any letters patent issued under this Act sealed Letters patent 
 and bearing date a» of any day prior to the day of the actual rated^tobe'of 
 sealing thereof shall be of the same force and validity as if ^^^ ^^"^^ 
 
 B B 
 
370 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 validity as if 
 sealed on the 
 day of the date. 
 
 Letters patent 
 obtained in 
 United King- 
 dom for pa- 
 tented foreign 
 inventions not 
 to continue in 
 force after the 
 expiration of 
 the foreign 
 patent. 
 
 Letters patent 
 not to prevent 
 the use of 
 inventions in 
 foreign ships 
 resorting to 
 British ports. 
 
 they had been sealed on the day as of which the same are 
 expressed to be sealed and bear date : Prorided always, that 
 save where such letters patent are granted for any invention, 
 in respect whereof a complete specification has been deposited 
 npon the application for the same under this Act, no pro- 
 ceeding at law or in equity shall be had upon such letters 
 patent in respect of any infringement committed before the 
 same were actually granted. 
 
 XXV. "Where, upon any application made after the passing 
 of this Act, letters patent are granted in the United Kingdom 
 for or in respect of any invention first invented in any foreign 
 country or by the subject of any foreign power or state, and 
 a patent or like privilege for the monopoly or exclusive use 
 or exercise of such invention in any foreign country is there 
 obtained before the grant of such letters patent in the 
 United Kingdom, all rights and privileges under such let- 
 ters patent shall (notwithstanding any term in such letters 
 patent limited) cease and be void immediately upon the 
 expiration or other determination of the term during which 
 the patent or like privilege obtained in such foreign country 
 shall continue in force, or where more than one such patent 
 or like privilege is obtained abroad, immediately upon the 
 expiration or determination of the term which shall first 
 expire or be determined of such several patents or like privi- 
 leges : Provided always, that no letters patent for or in 
 respect of any invention for which any such patent or like 
 privilege as aforesaid shall have been obtained in any foreign 
 country, and which shall be granted in the said United 
 Kingdom after the expiration of the term for which such 
 patent or privilege was granted or was in force shall be of 
 any validity. 
 
 XXVI. No letters patent for any invention (granted after 
 the passing of this Act) shall extend to prevent the use of 
 such invention in any foreign ship or vessel, or for the navi- 
 gation of any foreign ship or vessel, which may be in any port 
 of her Majesty's dominions, or in any of the waters within 
 the jurisdiction of any of her Majesty's coiirts, where such 
 
STATUTES 15 & 16 VICT. c. 83. 371 
 
 invention is not so used for th.e manufacture of any goods or 
 
 commodities to be vended within or exported from lier 
 
 Majesty's dominions : Provided always that this enactment Except ships 
 
 shall not extend to the ships or vessels of any foreign state of states^if whose 
 
 which the laws authorize subiects of such foreign state, having P°?'*^ British 
 
 " . . „ ships are pre- 
 
 patents or like privileges for the exclusive use or exercise of vented from 
 
 inventions within its territories, to prevent or interfere with "nygltion"^" 
 
 the use of such inventions in British ships or vessels, or in or 
 
 about the navigation of British ships or vessels, while in the ports 
 
 of such foreign state, or in the waters within the jurisdiction 
 
 of its courts, where such inventions are not so used for the 
 
 manufacture of goods or commodities to be vended within or 
 
 exported from the territories of such foreign state. 
 
 XXVII. All letters patent to be granted under this Act Specifications 
 (save only letters patent granted after the filing of a com- instead of 
 plete specification) shall require the specification thereunder being enrolled, 
 to be filed in the High Court of Chancery, instead of re- 
 quiring the same to be enroUed, and no enrolment shall be 
 requisite. 
 
 XXVIII. Every specification to be filed in pursuance of Specifications, 
 
 the condition of any letters patent shall be filed in such office ;„ g^^ij gggg 
 
 of the Court of Chancery as the Lord Chancellor shall from '^ Lord Chan- 
 
 ..,.„. -, cellor shall 
 
 time to tune appoint, and every provisional specification and dii-ect, 
 
 complete specification left or filed at the office of the Com- 
 missioners on the application for any letters patent, shall 
 forthwith after the grant of the letters patent, or if no letters 
 patent be granted then immediately on the expiration of six 
 months from the time of such application, be transferred to 
 and kept in the said office appointed for filing specifications 
 in Chancery ; and in case reference is made to drawings in 
 any specification deposited or filed under this Act, an extra As to filing 
 copy of such drawings shall be left with such specification, (a) drawing^'^^ °^ 
 
 XXIX. The Commissioners shall cause true copies of all Copies of spe- 
 
 specifications (other than provisional specifications, disclaimers, ^g ^g""^ *° 
 
 and memoranda of alterations filed under or in pursuance of inspection at 
 
 this Act, and of all provisional specifications after the term of missioners and 
 
 at Edinburgh 
 (a) The latter part of this section repealed by 16 & 17 Vict. c. 115, ». 1. and Dublin. 
 
372 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Specificationu 
 and other 
 documents to 
 be printed and 
 published. 
 
 As to present- 
 ing copies of 
 poblications to 
 public 
 libraries. 
 
 Enrolments, 
 &c., may be 
 removed to the 
 office for speci- 
 fications. 
 
 the provisional protection of the invention has expired, to be 
 open to the inspection of the public at the office of the Com- 
 missioners, and at an office ia Edinburgh and Dubliu respec- 
 tively, at all reasonable times, subject to such regulations as 
 the Commissioners may direct ; and the Commissioners shall 
 cause a transcript of the said letters patent to be transmitted 
 for enrolment in the Court of Chancery, Dublin, and shall 
 cause the same to be enrolled therein, and the transcript or 
 ■ exemplification thenceforward shall have the like effect to all 
 intents and purposes as if the original letters patent had been 
 enrolled in the Court of Chancery in Dublin, and all parties 
 shall have all their remedies by scire facias or otherwise, as if 
 the letters patent had been granted to extend to Ireland only. 
 
 XXX. The Commissioners shall cause to be priuted, pub- 
 lished and sold, at such prices and in such manner as they 
 may think fit, all specifications, disclaimers, and memoranda 
 of alterations deposited or filed under this Act, and such 
 specifications (not being provisional specifications), disclaimers 
 and memoranda respectively shall be so printed and pub- 
 lished as soon as conveniently may be after the filing thereof 
 respectively, and all such provisional specifications shall be 
 so printed and published as soon as conveniently may be 
 after the expiration of the provisional protection obtained in 
 respect thereof ; and it shall be lawful for the Commissioners 
 to present copies of all such publications to such public 
 libraries and museums as they may think fit, and to allow the 
 person depositing or filing any such specification, disclaimer, 
 or memorandum of alteration to have such number not ex- 
 ceeding twenty-five, of the copies thereof so printed and pub- 
 lished, without any payment for the same as they may think 
 fit. 
 
 XXXI. It shall be lawful for the Lord Chancellor and the 
 Master of the Rolls to direct the enrolment of specifications, 
 disclaimers, and memoranda of alterations heretofore or here- 
 after enrolled or deposited at the Rolls Chapel Office, or at 
 the Petty Bag Office, or at the Enrolment Office of the Court 
 of Chancery, or in the custody of the Master of the Rolls as 
 
STATUTES 15 & 16 VICT. c. 83. 373 
 
 keeper of the public records, to be transferred to and kept in 
 the office appointed for filing specifications ia Chancery under 
 this Act. 
 
 XXXII. The Commissioners shall cause indexes to all Commissionerg 
 
 specifications, disclaimers, and memoranda of alterations here- je^es to be 
 
 tofore or to be hereafter enrolled or deposited as last afore- made to old 
 
 , specincations, 
 
 said to be prepared in such form as they may think fit, and &c. ; such 
 
 ' such indexes shall be open to the inspection of the public at ^'g"'^!' b?' 
 
 such place or places as the Commissioners shall appoint, and printed and 
 
 subject to the regulations to be made by the Commissioners, 
 
 and the Commissioners may cause all or any of such indexes, 
 
 specifications, disclaimers and memoranda of alterations to be 
 
 printed, published, and sold in such manner and at such 
 
 prices as the Commissioners may think fit. 
 
 XXXIII. Copies, printed by the printers to the Queen's Copies of sne- 
 Majesty, of specifications, disclaimers, and memoranda of as printed' by ' 
 alterations shall be admissible in evidence, and deemed and Q""™ s pnn- 
 
 _ ' ters, to be 
 
 taken to he prima facie evidence of the existence and contents evidence. 
 of the documents to which they purport to relate in all courts 
 and in all proceedings relating to letters patent.(a) 
 
 XXXrV. There shall be kept at the office appointed for Register of 
 filing specifications in Chancery under this Act a book or books ^ept. 
 to be called " The Register of Patents," wherein shall be 
 entered and recorded in chronological order all letters patent 
 granted under this Act, the deposit or filing of specifications, 
 disclaimers, and memoranda of alterations filed in respect of 
 such letters patent, all amendments in such letters patent, and 
 specifications, all confirmations and extensions of such letters 
 patent, the expiry vacating or cancelling such letters patent, 
 with the dates thereof respectively, and all other matters and 
 things afiiecting the validity of such letters patent as the com- 
 missioners may direct, and such register or a copy thereof shall 
 be open at all convenient times to the inspection of the public 
 subject to such regulations as the commissioners may make. 
 
 XXXV. There shall be kept at the office appointed for filing A registei- of 
 specifications' in Chancery under this Act a book or books 
 (a) Repealed by 16 & 17 Vict. c. 115, s. 1. 
 
374 STATUTES 15 & 16 VICT, c, 83. 
 
 be kept at the entitled "The Register of Proprietors," wlierein shall be 
 specificationsf entered, in such ilianner as the commissioners shall direct, the 
 assignment of any letters patent, or of any share or interest 
 therein, any licence under letters patent, and the district to 
 which such licence relates, with the name or names of any 
 person having any share or interest iil such letters patent or 
 licence, the date of his or their acquiring such letters patent, 
 share, and interest, and any other matter or thing relating to 
 or affecting the proprietorship in such letters patent or licence ; 
 and a copy of any entry in such book, certified under such 
 seal as may have been appointed or as may be directed by the 
 Lord Chancellor to be used in the said office, shall be given to 
 any person requiring the same, on payment of the fees herein- 
 after provided ; and such copies so certified shall be received 
 in evidence in all courts and in all proceedings, and shall be 
 prima facie proof of the assignment of such letters patent, or 
 share or interest therein, or of the licence or proprietorship, 
 as therein expressed : Provided always, that until such entry 
 shall have been made the grantee or grantees of the letters 
 patent shall be deemed and taken to be the sole and exclusive 
 proprietor or proprietors of such letters patent, and of all the 
 licences and privileges thereby given and granted ; that certi- 
 fied duplicates of all entries made in the said register of pro- 
 prietors shall forthwith be transmitted to the office of the 
 commissioners in Edinburgh and Dublin, where the same 
 shall also be open to the inspection of the public ; and any 
 writ of scire facias to repeal such letters patent may be issued 
 to the sheriff of the county or counties in which the grantee 
 or grantees resided at the time when the said letters patent 
 were granted ; and in case such grantee or grantees do not 
 reside in the United Kingdom it shall be sufficient to file such 
 writ in the Petty Bag Office, and serve notice thereof in 
 writing at the last known residence or place of business of 
 such grantee or grantees ; and such register or a copy shall be 
 open to the inspection of the public at the office of the commis- 
 sioners, subject to such regulations as the commissioners may 
 make : Provided always, that in any proceeding in Scotland 
 
STATUTES 15 & 16 VICT. c. 83. 375 
 
 to repeal any letters patent, service of all writs and summonses 
 shall be made according to the existing forms and practice ; 
 provided also, that the grantee or grantees of letters patent 
 to be hereafter granted may assign the letters patent 
 for England, Scotland, or Ireland respectively as effectually 
 as if the letters patent had been originally granted to extend 
 to England or Scotland or Ireland only, and the assignee or 
 assignees shall have the same rights of action and remedies, 
 and shall be subject to the like actions and suits as he or they 
 should and would have had and been subject to upon the as- 
 signment of letters patent granted to England Ireland or 
 Scotland before the passiag of this Act. 
 
 XXXVI. Notwithstanding any proviso that may exist in Power for more 
 former letters patent, it shall be lawful for a larger number persons to have 
 than twelve persons hereafter to have a legal and beneficial ? ^p*' interest 
 interest in such letters patent. patent. 
 
 XXXVII. If any person shall wilfully make or cause to be Falsification or 
 
 . forsr6rv of 
 
 made any false entry in the said register of proprietors, or entries a 
 
 shall wilfully make or forge or cause to be made or forged, misdemeanor, 
 ^ny writing falsely purporting to be a copy of any entry in 
 the said book, or shall produce or tender, or cause to be pro- 
 duced or tendered, in evidence, any such writing, knowing the 
 same to be false or forged, he shall be guilty of a misdemeanor 
 and shall be punished by fine and imprisonment accordingly. 
 
 XXXVIII. If any person shall deem himself aggrieved by Entries may be 
 any entry made under colour of this Act in the said register expunged. 
 
 of proprietors, it shall be lawful for such person to apply by 
 motion, to the Master of the Rolls, or to any of the courts of 
 common law at Westminster in term time, or by summons to 
 a judge of any of the said courts in vacation, for an order 
 that such entry may be expunged, vacated or varied ; and 
 upon any such application the Master of the Rolls or such 
 court or Judge respectively, may make such order for expun- 
 ging, vacating, or varying such entry and as to the costs of 
 such application, as to the said Master of the Rolls or to such 
 court or Judge may seem fit ; and the officer having the care 
 and custody of such register, on the production to him of any 
 
376 STATUTES 15 & 16 VICT. c. 83. 
 
 sach order for expunging, vacating or varying any such entry, 
 shall eipunge, vacate, or vary the same, according to the re- 
 quisitions of such order. 
 Provisions of XXXIX. All the provisions of the Acts of the session 
 c. 83 and of ' holden in the fifth and sixth years of King William IV., 
 ^ ^a ^"'*' chapter eighty-three, and of the session holden in the seventh 
 disclaimers and eighth years of her majesty, chapter sixty nine, respec- 
 randa'of"'" tively, relating to disclaimers, and memoranda of alterations 
 alterations to in letters patent and specifications, except as hereinafter 
 patents under provided, shall be applicable and apply to any letters patent 
 
 this Act. 
 
 granted, and to any specification filed under the provisions of 
 
 Applications this Act : Provided always, that all applications for leave to 
 
 and caveats to 6nter a disclaimer or memorandum of alteration shall be made, 
 
 be at office of and all caveats relating: thereto shall be lodsred at the office of 
 
 Commis- ... 
 
 sioners. the commissioners, and shall be referred to the respective law 
 
 officers in the said first recited Act mentioned : provided also, 
 that every such disclaimer or memorandum of alteration shall 
 be filed in the office appointed for filing specifications in 
 Chancery under this Act, with the specification to which the 
 same relates, in lieu of being entered or filed and enrolled as 
 required by the said first recited Act, or by the Act of the 
 session holden in the twelfth and thirteen years of her Majesty, 
 chapter one hundred and nine, and the said Acts shall be 
 construed accordingly : provided also, that such filing of any 
 disclaimer or memorandum of alteration, in pursuance of the 
 leave of the law officer in the firstrecited Act mentioned, certified 
 as therein mentioned, shall, except in case of fraud, be conclusive 
 as to the right of the party to enter such disclaimer or memoran- 
 dum of alteration under the said Acts and this Act ; and no 
 objection shall be allowed to be made in any proceeding upon or 
 touching such letters patent, specification, disclaimer, or memo- 
 randum of alteration, on the ground that the party entering such 
 disclaimer or memorandum of alteration had not sufficient 
 authority in that behalf: provided also, that no action shall 
 be brought upon any letters patent in which, or on the speci- 
 fication of which any disclaimer or memorandum of alteration 
 shallhave been filed in respect of any infringement committed 
 
STATUTES 15 & 16 VICT. c. 83. 377 
 
 prior to the filing of sucli disclaimer or memorandum of 
 alteration, unless the law- officers shall certify in his fiat that 
 any snch action may be brought, notwithstanding the entry 
 or filing of such disclaimer or memorandum of alteration. 
 
 XL. All the provisions of the said Act of the fifth and sixth Provisions of 
 years of King WUliam IV. for the confirmation of any let- ^ gg . g' & 3 
 ters patent, and the grant of new letters patent, and all the Vict. c. 67, and 
 provisions of the said Act, and of the Acts of the session c. 69, as to 
 holden in the second and third years of her Majesty, chapter and^'ro^onsa- 
 sixty-seven, and of the session holden in the seventh and tion, to apply 
 eighth years of her Majesty, chapter sixty-nine respectively, under this Act. 
 relating to the prolongation of the term of letters patent, and 
 to the grant of new letters patent for a further term, shall 
 extend and apply to any letters patent granted under the 
 provisions of this Act, and it shall be lawful for her Majesty 
 to grant any new letters patent, as in the said Acts mentioned ; 
 and in the granting of any such new letters patent, as in the 
 said Act mentioned ; and in the granting of any such new 
 letters patent her Majesty's Order in Council shall be a 
 sufficient warrant and authority for the sealing of any new 
 letters patent, and for the insertion in such new letters patent 
 of any restrictions, conditions, and provisions in the said 
 order mentioned ; and the Lord Chancellor on the receipt of 
 the said order in council shall cause letters patent, according 
 to the tenor and effect of such order, to be made and sealed 
 in the manner herein directed for letters patent issued under 
 the warrant of the law officer : Provided always, that such 
 new letters patent shall extend to and be available in and for 
 such places as the original letters patent extended to and were 
 available in ; provided also, that such new letters patent shall 
 be sealed and bear date as of the day after the expiration of 
 the term of the original letters patent which may first expire. 
 
 XLI. In any action in any of her Majesty's superior courts In actions for 
 of record at Westminster or in Dublin for the infringement oflettlr™™ 
 of letters patent the plaintiff shall deliver with his declaration, patent, par- 
 particulars of the breaches complained of in the said action, delivered, and 
 and the defendant, on pleading thereto, shall deliver with his "° evidence 
 
378 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 allowed not 
 
 mentioned 
 
 therein. 
 
 Courts of 
 common law 
 may erant in- 
 junction in 
 case of in- 
 fringement. 
 
 Particulars to 
 be regarded in 
 taxation of 
 costs. 
 
 pleas, and the prosecutor in any proceedings by scire facias 
 to repeal letters patent shall deliver with his declaration, 
 particulars of any objections on which he means to rely at the 
 trial in support of the suggestions of the said declaration in 
 the proceedings by scire facias respectively ; and at the trial 
 of such action or proceeding by scire facias no evidence shall 
 be allowed to be given in support of any alleged infringement, 
 or of any objection impeaching the validity of such letters 
 patent which shall not be contained in the particulars de- 
 livered as aforesaid : Provided always that the place or places 
 at or in which and in what manner the invention is alleged to 
 have been used or published prior to the date of the letters 
 patent shall be stated in such particulars : Provided also, that 
 it shall and may be lawful for any judge at chambers to allow 
 such plaintiff or defendant or prosecutor respectively to 
 amend the particulars delivered as aforesaid, upon such terms 
 as to such judge shall seem fit: Provided also, that at the 
 trial of any proceeding by scire facias to repeal letters patent 
 the defendant shall be entitled to begin and to give evidence 
 in support of such letters patent, and in case evidence shall 
 be adduced on the part of the prosecutor impeaching the 
 validity of such letters patent, the defendant shall be entitled 
 to the reply. 
 
 XLII. In any action in any of Her Majesty's Superior 
 Courts of Record at Westminster and in Dublin for the 
 infringement of letters patent, it shall be lawful for the 
 court in which such action is pending, if the court be then 
 sitting, or if the court be not sitting then for a judge of such 
 court, on the application of the plaiatiff or defendant respec- 
 tively, to make such order for an injunction, inspection, or 
 account, and to give such direction respecting such action, 
 injunction, inspection, and account,and the proceedings therein 
 respectively, as to such court or judge may seem fit. 
 
 XLIII. In taxing the costs in any action in any of Her 
 Majesty's Superior Courts at Westminster or ia Dublin, 
 commenced after the passing of this Act for infringing letters 
 patent, regard shall be had to the particulars delivered in 
 
STATUTES 15 & 16 VICT. c. 83. 379 
 
 such action, and the plaintiff and defendant respectively shall 
 not be allowed any costs in respect of any particular unless 
 certified by the judge before whom the trial was had to have 
 been proved by such plaintiff or defendant respectively with- 
 out regard to the general costs of the cause ; and it shall be 
 lawful for the judge before whom any such action shall be 
 tried to certify on the record that the validity of the letters 
 patent in the declaration mentioned came in question ; ajid 
 the record, w'ith such certificate, being given in evidence in 
 any suit or action for infringiag the said letters patent, or in 
 any proceeding by scire facias to repeal the letters patent, 
 shall entitle the plaintiff in any such suit or action, or the 
 defendant in such proceeding by scire facias on obtaining a 
 decree, decretal order, or final judgment, to his full costs, 
 charges, and expenses, taxed as between attorney and client, 
 unless the judge making such decree or order, or the judge 
 trying such action or proceeding, shall certify that the plain- 
 tiff or defendant respectively ought not to have such full 
 costs : Provided always, that nothing herein contained shall 
 affect the jurisdiction and forms of process of the Courts in 
 Scotland in any action for the infringement of letters patent, 
 or in any action or proceeding respecting letters patent 
 hitherto competent to the said courts : Provided also, that 
 when any proceedings shall require to be taken in Scotland to 
 repeal any letters patent, such proceedings shall be taken in 
 the form of an action of reduction at the instance of Her 
 Majesty's advocate, or at the instance of any other party 
 having interest with concurrence of Her Majesty's advocate, 
 which concurrence Her Majesty's advocate is authorized and 
 impowered to give upon just cause shown only. 
 
 XLIV. There shall be paid in respect of letters patent Payments and 
 applied for or issued as herein mentioned, the filing of speci- on letters, 
 fications and disclaimers, certificates, entries, and searches, 
 and other matters and things mentioned in the schedule to 
 this Act, such fees as are mentioned in the said schedule ; 
 and there shall be paid unto and for the use of Her Majesty, 
 her heirs and successors, for or in respect of the warrants and 
 
380 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Duties to be 
 under manage- 
 ment of Com- 
 missioners of 
 Inland Reve- 
 
 All moneys 
 receiyed to be 
 paid to the 
 Consolidated 
 fund. 
 
 Not to prevent 
 payment of 
 fees to law 
 officers in case 
 of opposition, 
 &c. 
 
 Fees and 
 salaries of 
 officers. 
 
 certificates mentioned in the said schedule, or the vellum, 
 parchment, or paper on which the same respectively are 
 written, the stamp duties mentioned in the said schedule ; 
 and no other stamp duties shall be levied or fees except as 
 hereinafter mentioned, taken in respect to such letters patent 
 and specifications, and the matters and things in such schedule 
 mentioned, (a) 
 
 XLV. The stamp duties hereby granted shall be under the 
 care and management of the commissioners of inland revenue ; 
 and the several rules, regulations, provisions, penalties, 
 clauses, and matters contained in any Act now or here- 
 after to be in force with reference to stamp duties shall be 
 applicable thereto, (a) 
 
 XL VI. The fees to be paid as aforesaid shall from time to 
 time be paid into the receipt of the Exchequer, and be carried 
 to and made part of the consolidated fund of the United 
 Kingdom, (a) 
 
 XLVII. Provided always, that nothing herein contained 
 shall prevent the payment as heretofore to the law ofiicers in 
 cases of opposition to the granting of letters patent, and in 
 cases of disclaimers and memoranda of alterations, of such 
 fees as may be appointed by the Lord Chancellor and Master 
 of the Rolls as the fee to be paid on the hearing of such oppo- 
 sitions, and in the case of disclaimers and memoranda of 
 alterations respectively, or of such reasonable sums for office 
 or other copies of documents in the office of the Commis- 
 sioners, as the Commissioners may from time to time appoint 
 to be paid for such copies, and the Lord Chancellor and 
 Master of the Rolls and the Commissioners are hereby respec- 
 tively authorized and empowered to appoint the fees to be so 
 paid in respect of such oppositions, disclaimers, and memo- 
 randa of alterations respectively, and for such office or other 
 copies. 
 
 XL VIII. It shall be lawful for the Commissioners of Her 
 Majesty's Treasury from time to time to allow such fees to 
 the law officers and their clerks (for duties under this Act 
 
 (n) This section is repealed by 16 & 17 Vict. u. 5,s, 1. 
 
STATUTES 15 & 16 VICT. c. 83. 381 
 
 in respect of •which fees may not be payable to them nnder 
 the provisions lastly hereinbefore contained) as the Lord 
 Chancellor and Master of the Rolls may from time to time 
 appoint, and to allow such salaries and payments to. any 
 clerks and officers in respect of any additional duties imposed 
 on them by this Act, as the said Commissioners of the 
 Treasury may think fit. 
 
 XLIX. It shall be lawful for the Commissioners of her Sums for de- 
 Majesty's Treasury to allow from time to time the necessary ^^j expenses 
 sums for urovidinar offices under this Act, and for the fees, "nder this Act 
 salaries, and payments allowed by them as aforesaid, and for of moneys 
 defraying the current and incidental expenses of such office J>™4iament''^ 
 or offices ; and the sums to be so allowed shall be paid out of 
 such moneys as may be provided by Parliamentfor that purpose. 
 
 L. And whereas divers persons by virtue of their offices or Power to 
 appointments are entitled to fees or charges payable iu respect grant cam- 
 of letters patent as heretofore granted within the United pe^sation to 
 
 ^ ° persons 
 
 Kingdom of Great Britain and Ireland, or have and derive affected by this 
 in respect of such letters patent, or the procedure for the 
 granting thereof, fees or other emoluments or advantages : 
 It shall be lawful for the said Commissioners of the Treasury 
 to grant to any such persons who may sustain any loss of 
 fees, emoluments, or advantages by reason of the passing of 
 this Act, such compensation as, having regard to the tenure 
 and nature of their respective offices and appointments, such 
 Commissioners deem just and proper to be awarded ; and all 
 such compensations shall be paid out of such monies as may 
 be provided by Parliament for that purpose: Provided al- 
 ways, that in case any person to whom any yearly sum by 
 way of compensation shall be awarded and paid shall after 
 the passing of this Act be appointed to any office or place of 
 emolument under the provisions of this Act, or in the public 
 service, then and in every such case the amount of such 
 yearly sum shall in every year be diminished by so much as 
 the emoluments of such person for such year from such office 
 or place shall amount to, and provision in that behalf shall 
 be made in the award to him of such yearly sum. 
 
 Act. 
 
382 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Account of 
 salaries, fees, 
 and compensa- 
 tion allowances 
 to be laid 
 before Pai-lia- 
 ment. 
 
 Not to extend 
 to patents 
 applied for 
 before the com- 
 mencement of 
 Act. 
 
 As to letters 
 patent granted 
 before com- 
 mencement of 
 this Act for 
 England, 
 Scotland, or 
 Ireland. 
 
 LI. An account of all salaries, fees, allowances, sums, and 
 compensations to be appointed, allowed, or granted under this 
 Act shall, within fourteen days next after the same shall be 
 so appointed, allowed, or granted respectively, be laid before 
 both Houses of Parliament, if Parliament be then sitting, or 
 if Parliament be not then sitting, then within fourteen days 
 after the next meeting of Parliament, 
 
 LII. Letters patent may be granted in respect of applica- 
 tions made before the commencement of this Act in like 
 manner and subject to the same provisions as if this Act had 
 not passed. 
 
 LIII. Where letters patent for England or Scotland or 
 Ireland have been granted before the commencement of this 
 Act, or are in respect of any application made before the com- 
 mencement of this Act hereafter granted for any invention, 
 letters patent for England or Scotland or Ireland may be 
 granted for such invention in like manner as if this Act had 
 not been passed : Provided always, that in lieu of all the 
 fees or payments and stamp duties now payable in respect of 
 such letters patent, or in or about obtaining a grant thereof, 
 there shall be paid in respect of such letters patent for 
 England or Scotland or Ireland on the sealing of such respec- 
 tive letters patent a sum equal to one-third part of the fees 
 and stamp duties which would be payable according to the 
 schedule to this Act in respect of letters patent issued for the 
 United Kingdom under this Act, on or previously to the 
 sealing of such letters patent ; and at or before the expira- 
 tion of the third year and the seventh year respectively of 
 the term granted by such letters patent for England or Scot- 
 land or Ireland, sums equal to one-third part of the fees and 
 stamp duties payable at the expiration of the third year and 
 the seventh year respectively of the term granted by letters 
 patent issued for the United Kingdom under this Act; and 
 the condition of such letters patent for England or Scotland 
 or Ireland shall be varied accordingly ; and such fees shall be 
 paid to such persons as the Commissioners of her Majesty's 
 
STATUTES 15 & 16 VICT. c. 83. 383 
 
 Treasury shall appoint, and shall be carried to and form part 
 of the said consolidated fund, (a) 
 
 LIV. The several forms in the schedule to this Act may Forms in 
 be used for and in respect of the several matters therein men- ^" ^^^^^ "'^^ 
 tioned, and the Commissioners may, where they think fit, 
 vary such forms as occasion may require, and cause to be 
 printed and circulated such other forms as they may think fit 
 to be used for the purposes of this Act. 
 
 LV. In the construction of this Act the following expres- interpretation 
 sions shall have the meanings hereby assigned to them, un- *^'™' 
 less such meanings be repugnant to or inconsistent with the 
 context ; (that is to say :) 
 
 The expression " Lord Chancellor " shall mean the Lord 
 Chancellor or Lord Keeper of the Great Seal, or Lords 
 Commissioners of the Great Seal. 
 The expression " the Commissioners " shall mean the Com- 
 missioners for the time being acting in execution of this 
 Act. 
 The expression " law officer " shall mean Her Majesty's 
 Attorney- General or Solicitor-General for the time being 
 for England, or the Lord Advocate, or Her Majesty's 
 Solicitor- General for the time being for Scotland, or Her 
 Majesty's Attorney-General or Solicitor- General for the 
 time being for Ireland. 
 The expression " invention " shall mean any manner of 
 new manufacture the subject of letters patent and grant 
 of privilege within the meaning of the Act of the twenty- 
 first year of the reign of King James the First, chapter 
 three. 
 The expressions " petition," " declaration," " provisional 
 specification," " warrant," and " letters patent " respec- 
 tively shall mean instruments in the form and to the 
 effect in the . schedule hereto annexed, subject to such 
 altetrations as may from time to time be made therein 
 under the powers and provisions of this Act. 
 
 (a) This section is repealed by 16 & 17 Vict. c. 5, s. 1. 
 
384 
 
 STATUTES 15 & 16 VICT. C. 83. 
 
 Short title. 
 
 Commence- 
 ment of Act. 
 
 LVI. In citing this Act in other Acts of Parliament, in- 
 struments, and proceedings, it shall be sufficient to use the 
 expression " The Patent Law Amendment Act, 1852." 
 
 LVII. This Act shall commence and take effect from the 
 1st day of October, 1852. 
 
 THE SCHEDULE TO WHICH THIS ACT EEFBRS.(a) 
 Fees to be paid. 
 
 On leaving petition for grant of letters patent 
 On notice of intention to proceed with the appli- 
 cation ....... 
 
 On sealing of letters patent 
 
 On filing specification .... 
 
 At or before the expiration of the third year 
 At or before the expiration of the seventh year 
 On leaving notice of objections . 
 Every search and inspection 
 Entry of assignment or licence . 
 Certificate of assignment or licence 
 Piling application for disclaimer 
 Caveat agaiust disclaimer 
 
 £ 
 
 s. 
 
 d. 
 
 . 6 
 
 
 
 
 
 . 5 
 
 
 
 
 
 . 6 
 
 
 
 
 
 . 6 
 
 
 
 
 
 . 40 
 
 
 
 
 
 . 80 
 
 
 
 
 
 . 2 
 
 
 
 
 
 . 
 
 1 
 
 
 
 . 
 
 6 
 
 
 
 . 
 
 5 
 
 0. 
 
 . 5 
 
 
 
 
 
 . 2 
 
 
 
 
 
 Stamp duties to he paid. 
 
 On warrant of law officer for letters patent 
 
 On certificate of payment of the fee payable at or 
 
 before the expiration of the third year 
 On certificate of payment of the fee payable at or 
 
 before the expiration of the seventh year . 20 
 
 d. 
 
 
 10 
 
 
 
 («) So much of the schedule as relates to fees is repealed by 16 & 17 Vict. 
 u. 5, s, 1. 
 
STATUTES 15 & 16 VICT. c. 83. 385 
 
 FORMS. 
 
 Petition. 
 No. 
 
 To the Queen's most Excellent Majesty. 
 The humble petition of (here insert na/me and address of peti- 
 tioner') for, &c. 
 Sheweth : 
 
 That your petitioner is in possession of an invention for 
 (the title of the invention) which invention he believes will be 
 of great public utility ; that he is the true and first inventor 
 thereof ; and that the same is not in use by any other person 
 or persons, to the best of his knowledge and belief. 
 
 Tour petitioner therefore humbly prays, that your Majesty 
 will be pleased to grant unto him, his executors, adminis- 
 trators and assigns your royal letters patent for the United 
 Kingdom of Great Britain and Ireland, the Channel Islands, 
 and Isle of Man (Colonies to he mentioned if any) for the term 
 of fourteen years, pursuant to the statutes in that case made 
 and provided. 
 
 And your petitioner will ever pray, &o. 
 
 Declaeation. 
 No. 
 
 I of in the county of 
 
 do solemnly and sincerely declare, that I 
 am in possession of an invention for, &o. (the title as in peti- 
 tion), which invention I believe will be of great public utility ; 
 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 ; (where a complete specifica- 
 tion is to he filed with the petition and decla/ration, insert these 
 words : — " and that the instrument in writing under my hand 
 and seal hereunto annexed, particularly describes and ascertains 
 the nature of the said iavention and the manner in which the 
 
 C C 
 
386 STATUTES 15 & 16 VICT. 0. 83. 
 
 same is to be performed;") and I make this declaration con- 
 scientiously believing the same to be tme, and by virtue of 
 the provisions of an Act made and passed in the session of 
 Parliament held in the fifth and sixth years of the reign of 
 his late Majesty King William the Fourth, intituled " An Act 
 to repeal an Act of the present Session of Parliament, inti- 
 tuled, 'An Act for the more BflFectual Abolition 'of Oaths and 
 Affirmations taken and made in various Departments of the 
 State,' and to substitute Declarations in lieu thereof and for 
 the more entire Suppression of Voluntary and Extra-judicial 
 Oaths and Affidavits, and to make other Provisions for the 
 Abolition of Unnecessary Oaths." A. B. 
 
 Declared at this day of 
 
 before me, a Master in Chancery, or justice 
 
 of the peace. 
 
 Provisional Specification. 
 No. 
 
 I do hereby declare the nature of 
 
 the said invention for [insert title as in petition) to be as 
 follows : (here insert description) 
 Dated this day of A. D. 
 
 (To be signed by the applicant or his agent.) 
 
 Reference. 
 
 (To be endorsed on the petition.) 
 
 Her Majesty is pleased to refer this petition to 
 
 to consider what may be properly done therein 
 
 Clerk of the Commissioners. 
 
STATUTES 15 & 16 VICT. c. 83. 387 
 
 Waeeant. 
 
 In humble obedience to Her Majesty's command referring 
 to me tbe petition of of , 
 
 to consider -what may be properly done therein, I do hereby 
 certify as foUo-ws : that the said petition sets forth that the 
 petitioner {allegations of the petition) 
 And the petitioner most humbly prays (prayer of the petition) 
 
 That in support of the allegations contained in the said 
 petition the declaration of the petitioner has been laid before 
 me, whereby he solemnly declares, that (allegations of the 
 deola/ration'). 
 
 That there has also been laid before me (a provisional spe- 
 cification signed and also a certificate 
 
 ) or (a complete specification, and a certificate of the 
 filing thereof), whereby it appears that the said invention was 
 provisionally protected (or protected) from the 
 day of A. D. in pursuance of 
 
 the statute : 
 
 That it appears that the said application was duly adver- 
 tized : 
 
 Upon consideration of all the matters aforesaid, and as it 
 is entirely at the hazard of the said petitioner whether the 
 said petition is new or will have the desired success, and as 
 it may be reasonable for Her Majesty to encourage all arts and 
 inventions which may be for the public good, I am of opinion, 
 that Her Majesty may grant her royal letters patent unto the 
 petitioner, his executors, administrators, and assigns, for his 
 said invention within the United Kingdom of Great Britain 
 and Ireland, the Channel Islands, and Isle of Man, (Golonies to 
 he mentioned if amj,') for the term of fourteen years according 
 to the statute in that case made and provided, if Her Majesty 
 shall be graciously pleased so to do, to the tenor and effect 
 following : (see next form.') 
 
 Given under my hand this day of 
 
 A. D. 
 
 (Seal of the Commissioners.) 
 
388 STATUTES 15 & 16 VICT. c. 83. 
 
 Letters Patent. 
 
 Victoria, by the Grace of God, of th.e United Kingdom of 
 Great Britaia and Ireland, Queen, Defender of the Faith ; to 
 all whom these presents shall come greetiag : 
 
 Whereas hath by his petition humbly 
 
 represented to us that he is in possessipn of an invention for 
 , which the petitioner believes will be of 
 great public utility ; that he is the first and true inventor 
 thereof ; and that the same is not in use by any other person 
 or persons, to the best of his knowledge and belief : the pe- 
 titioner therefore most humbly prayed that we would be gra- 
 ciously pleased to grant unto him, his executors, administrators 
 and assigns, our royal letters patent for the sole use, benefit 
 and advantage of his said invention within our United King- 
 dom of Great Britain and Ireland, the Channel Islands, and 
 Isle of Man for the term of fourteen years, pursuant to the 
 statute in that case made and provided : 
 
 And we, being willing to give encouragement to all arts 
 and inventions which may be for the public good, are gra- 
 ciously pleased to condescend to the petitioner's request : 
 Know ye, therefore, that we, of our especial grace, certain 
 knowledge, and mere motion, have given and granted, and by 
 these presents, for us, our heirs ahd successors, do give and 
 grant unto the said , his executors, admiuis- 
 
 trators, and assigns, our especial licence, fall power, sole pri- 
 vilege, and authority that the said , his 
 executors, administrators, and assigns, and every of them, by 
 himself and themselves, or by his and their deputy or 
 deputies, servants or agents, or such others as he the said 
 , his executors, administrators, or assigns, 
 shall at any time agree with, and no others, from time to time 
 and at all times hereafter during the term of years herein ex- 
 pressed, shall and lawfully may make, use, exercise, and vend 
 his said iuvention within our United Kingdom of Great Bri- 
 tain and Ireland, the Channel Islands and Isle of Man in 
 such manner as to him the said , his 
 executors^ administrators and assigns, or any of them, shall 
 
STATUTES 15 & 16 VICT. c. 83. 389 
 
 in his or their discretion seem meet ; and that he the said 
 , his executors, administrators, and 
 assigns, shall and lawfully may have and enjoy the whole 
 profit, benefit, commodity, and advantage from time to time 
 coming, growing, accruing, and arising by reason of the said 
 invention, for and during the term of years herein mentioned ; 
 to have, hold, exercise and enjoy the said licences, powers, 
 privileges and advantages hereinbefore granted or mentioned 
 to be granted unto the said , his executors, 
 
 administrators, and assigns, for and during and unto the full 
 end and term of fourteen years from the day of the date of 
 these presents next and immediately ensuing, according to 
 the statute in such case made and provided ; and to the 
 end that he the said , his executors, ad- 
 
 ministrators and assigns, and every of them, may have and 
 enjoy the full benefit and the sole use and exercise of the said 
 invention, according to our gracious intention hereinbefore 
 declared, we do by these presents, for us, our heirs and suc- 
 cessors, require and strictly command all and every person 
 and persons, bodies politic and corporate, and all other our 
 subjects whatsoever, of what estate, quality, degree, name, or 
 condition soever they be, within our United Kingdom of 
 Great Britain and Ireland, the Channel Islands and Isle of 
 Man that neither they, nor any of them, at any time during 
 the continuance of the said term of fourteen years hereby 
 granted, either directly or indirectly do make, use, or put in 
 practice the said invention, or any part of the same, so 
 attained unto by the said 
 
 as aforesaid, nor in any wise counterfeit, imitate, or 
 resemble the same, nor shall make or cause to be made any 
 addition thereunto, or subtraction from the same, whereby to 
 pretend himself or themselves the inventor or inventors, de- 
 visor or devisors thereof, without the consent, licence or 
 agreement of the said , his executors, ad- 
 
 ministrators or assigns, in writing under his or their hands 
 and seals first had and obtained in that behalf, upon such 
 pains and penalties as can or may be justly inflicted on such 
 
390 STATUTES 15 & 16 VICT. c. 83. 
 
 offenders for their contempt of this our royal command, and 
 further to be answerable to the said , his 
 
 executors, administrators and assigns, according to law, for 
 his and their damages thereby occasioned: And moreover, 
 we do by these presents, for us, our heirs and successors, will 
 and command all and singular the justices of the peace, 
 mayors, sheriffs, bailiffs, constables, head-boroughs, and all 
 other officers and ministers whatsoever of us, our heirs and 
 successors, for the time being, that they or any of them do not 
 nor shall not at any time during the said term hereby granted 
 in any wise molest, trouble or hinder the said 
 his executors, administrators, or assigns, or any of them, or 
 his or their deputies, servants, or agents, in or about the due 
 and lawful use or exercise of the aforesaid invention, or any- 
 thing relating thereto : Provided always, and these our letters 
 patent are and shall be upon this condition, that if at any 
 time during the said term hereby granted it shall be made to 
 appear to us, our heirs or successors, or any six or more of 
 our or their Privy Council, that this our grant is 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, the Channel Islands and Isle 
 of Man, or that the said 
 
 is not the first and true inventor thereof within this realm as 
 aforesaid, these our letters patent shall forthwith cease, 
 determine, and be utterly void to all intents and purposes, 
 anything hereinbefore contained to the contrary thereof in 
 anywise notwithstanding : Provided also, that these our 
 letters patent, or anything herein contained, shall not extend 
 or be construed to extend to give privilege unto the said 
 , his executors, administrators, or assigns, or 
 any of them, to use or imitate any invention or work what- 
 soever which hath heretofore been found out or invented by 
 any other of our subjects whatsoever, and publicly used or 
 exercised within our United Kingdom of Great Britain and 
 Ireland, the Channel Islands, or Isle of Man, unto whom our 
 
STATUTES 15 & 16 VICT. c. 83. 391 
 
 like letters patent or privileges have been already granted for 
 the sole use, exercise, and benefit thereof : it being our will - 
 and pleasure that the said , 
 
 his executors, administrators, and assigns, and all and every 
 other person and persons to whom like letters patent or 
 privileges have been already granted as aforesaid, shall 
 distinctly use and practice their several inventions by 
 them invented and found out,' according to the true intent 
 and meaning of the same respective letters patent and of 
 these presents : Provided likewise nevertheless, and these 
 our letters patent are upon this express condition, that if 
 the said shall not particularly describe 
 
 and ascertain the nature of the said invention, and in what 
 manner the same is to be performed, by an instrument in 
 writing under his or their or one of their hands and seals, 
 and cause the same to be filed in the Great Seal Patent 
 Office within sis calendar months next and immediately 
 after the date of these our letters patent ; and also if the 
 said his executors, administrators, or 
 
 assigns, shall not pay the stamp duty of fifty pounds and pro- 
 duce these our letters patent stamped with a proper stamp to 
 that amount at the office of our com.missioners of patents for 
 inventions before the expiration of three years from the date 
 of these our letters patent, pursuant to the provisions of the 
 act of the sixteenth year of our reign, chapter 5 ; and also if 
 the said his executors, administrators, or assigns, 
 
 shall not pay the stamp duty of one hundred pounds, and 
 produce these our letters patent stamped with a proper stamp 
 to that amount at the said office of our said commissioners be- 
 fore the expiration of seven years from the date of these our 
 letters patent pursuant also to the said act ; and also if 
 the said , his executors, 
 
 administrators, or assigns, shall not supply or cause to 
 be supplied for our service all such articles of the said 
 invention as he or they shall be required to supply by the 
 officers or commissioners administering the department of 
 our service for the use of which the same shall be required. 
 
392 STATUTES 15 & 16 VICT. c. 83. 
 
 in such manner, at snoh times, and at and npon Bnch reason- 
 able prices and terms as shall be settled for that purpose by 
 the said officers or commissioners requiring the same ; that 
 then and in any of the said cases these our letters patent, and 
 all liberties and advantages whatsoever hereby granted shall 
 utterly cease, determine, and become void, anything herein- 
 before contained to the contrary thereof in anywise notwith- 
 standing : Provided that nothing herein contained shall pre- 
 vent 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 , his executors, adminis- 
 
 trators, and assigns, that these our letters patent, or the filing 
 thereof, shall be in and by all things good, firm, valid, suffi- 
 cient, and efiectual in the law according to the true intent 
 and meaning thereof, and shall be taken, construed, and 
 adjudged in the most favourable and beneficial sense for the 
 best advantage of the said , his executors, 
 
 administrators, and assigns, as well as in all our courts of 
 record as elsewhere, and by all and singular the officers and 
 ministers whatsoever of us, our heirs and successors, in our 
 United Kingdom of Great Britain and Ireland, the Channel 
 Islands, and Isle of Man, and amongst all and every the 
 subjects of us, our heirs and successors, whatsoever and 
 wheresoever, notwithstanding the not full and certain descri- 
 bing the nature or quality of the said invention, or of the 
 materials thereunto conducing and belonging. In witness 
 whereof we have caused these our letters to be made patent, 
 this day of , A. D. , and 
 
 to be sealed and bear date as of the said day of 
 
 , A.D. , in the 
 
 year of our reign, (a.) 
 
 (a) The above form, being the one in actual use, has been substituted for 
 the form given in the schedule to the act. See section LIV. 
 
STATUTES 15 & 16 VICT. c. 83. 393 
 
 Specification. 
 
 To all to wlioin these presents shall come 
 I of send 
 
 greeting : 
 
 Whereas Her Most Excellent Majesty Queen Victoria, by 
 her letters patent bearing date the day of 
 
 A. D. , in the 
 
 year of her reign did for herself, her heirs and successors, give 
 and grant unto me the said , her special licence 
 
 that I the said , my executors, administrators and 
 
 assigns, or such others as I the said 
 
 my executors, administrators and assigns, should at 
 any time agree with, and no others, from time to time and 
 at all times thereafter during the term therein expressed 
 should and lawfully might make, use, exercise, and vend, 
 within the United Kingdom of Great Britain and Ireland, 
 the Channel Islands, and Isle of Man, (Colonies to be men- 
 tioned, if amy) an invention for (insert title as in letters patent) 
 upon the condition (amongst others) that I the said 
 
 , by an instrument in writing under my 
 hand and seal, should particularly describe and ascertain the 
 nature of the said invention, and in what manner the same 
 was to be performed, and cause the same to be filed in 
 
 within calendar months next and 
 
 -immediately after the date of the said letters patent. 
 
 Now know ye, that I the said do hereby 
 
 declare the nature of my said invention, and in what manner 
 the same is to be performed, to be particularly described and 
 ascertained ia and by the following statement ; (that is to say,) 
 (describe the imiention.') 
 
 In witness whereof I the said A. B. have heretofore 
 set my hand and seal this day of 
 
 A. D. 
 
 A. B. 
 
394 STATUTES 16 VICT. c. 5. 
 
 16 Vict. c. 5. 
 
 An Act to substitute Stamp Duties for Fees on passing 
 Letters Patent for Inventions, and to provide for the 
 Purchase for the pulUc use of certain Indexes of Speci- 
 fications. [21st February, 1853.] 
 
 15 & 16 Vict. AT THERE AS it is expedient that the fees payable in 
 
 V V respect of letters patent for inventions nnder the 
 
 Patent Law Amendment Act, 1852, and mentioned in the 
 
 schedule to such Act, be converted into stamp duties ; be it 
 
 enacted, therefore, as follows : 
 
 Sees. 17, 44, I. Sections seventeen, forty-four, forty-five, forty-six, and 
 
 45 46 And 53 •/ ' 
 
 ank part of ' fifty-three and so much of the schedule to the said Act as 
 
 Bchedule of relates to fees and stamp duties to be paid under the said Act, 
 
 repealed. shall be repealed. 
 
 Letters patent II. AH letters patent for inventions to be granted under 
 
 subject to the provisions of the said Patent Law Amendment Act, 1852, 
 
 avoidance on (except in the case provided for in the fourth section of this 
 
 non-payment ^ r r ^ 
 
 of stamp duties Act,) shall be made subject to the condition that the same 
 sSeduIeto'Siis shall be void, and that the powers and privileges thereby 
 Act annexed, granted shall cease and determine at the expiration of three 
 years and seven years respectively from the date thereof, un- 
 less there be paid before the expiration of the said three years 
 and seven years respectively the stamp duties in the schedule 
 to this Act annexed expressed to be payable before the expi- 
 ration of the third year and of the seventh year respectively, 
 and such letters patent or a duplicate thereof shall be stamped 
 with proper stamps showing the payment of such respective 
 stamp duties, and shall, when stamped, be produced before 
 the expiration of such three years and seven years respectively 
 at the office of the commissioners ; and a certificate of the 
 production of such letters patent or duplicate so stamped, 
 specifying the date of such production, shall be endorsed by 
 the clerk of the commissioners on the letters patent or dupli- 
 cate, and a like certificate shall be endorsed upon the warrant 
 for such letters patent filed in the said office. 
 
STATUTES 16 VICT. c. 5. 395 
 
 III. There shall be paid unto and for the use of Her Stamp duties 
 Majesty, her heirs and successors, for or in respect of letters jjje schedule to 
 patent applied for or issued under the provisions of the said ^^^ *"' *° ^® 
 Patent Law Amendment Act, 1852, warrants, specifications, 
 disclaimers, certificates, and entries, and other matters and 
 
 things mentioned in the schedule to this Act, or the vellum, 
 parchment, or paper on which the same respectively are 
 written, the stamp duties mentioned in the said schedule ; 
 and no other stamp duties shall.be levied in respect of such 
 letters patent, warrants, specifications, disclaimers, certificates, 
 entries, matters and things ; and the stamp duty mentioned 
 in the said schedule on office copies of documents shall be in 
 lieu of such sums as by the said Patent Law Amendment Act, 
 1852, are authorized to be appointed to be paid for such office 
 copies. 
 
 IV. Where the letters patent for England or Scotland or As to payment 
 Ireland have been granted before the commencement of the on letters 
 said Patent Law Amendment Act, 1862, or have been since fand^Scotknl" 
 the commencement of the said Act or hereafter may be or Ireland re- 
 granted for any invention, in respect of any application made ^' 
 before the commencement of the said Act, letters patent for 
 
 England or Scotland or Ireland may be granted for such in- 
 vention in like manner as if the said Act had not been passed. 
 Provided always that in lieu of all fees or payments and stamp 
 duties which were at the time of the passing of the said Act 
 payable in respect of such letters patent as last aforesaid, or 
 in or about obtaining a grant thereof, and in lieu of all other 
 stamp duties whatsoever, there shall be paid in respect of such 
 letters patent as last aforesaid on ^the sealing thereof stamp 
 duties equal to one third part of the stamp duties which would 
 be payable under this Act in respect of letters patent issued 
 for the United Kingdom under the said Patent Law Amend- 
 ment Act, 1852, on or previously to the sealing of such letters 
 patent as last aforesaid, and before the expiration of th& third 
 year and the seventh year respectively of the term granted 
 by such letters patent for England, Scotland, or Ireland, 
 stamp duties equal to one third part of the stamp duties 
 
396 
 
 STATUTES 16 VICT. C. 5. 
 
 Duties to be 
 under the 
 management of 
 the Commis- 
 sioners of In- 
 land Revenue. 
 
 Who are to 
 provide the 
 proper stamp 
 tor the pur- 
 pose. 
 
 Conditions of 
 letters patent 
 already 
 granted under 
 recited Act to 
 be satisfied by 
 payment of 
 stamp duties, 
 &o., under 
 this Act. 
 
 payable under this Act before the expiration of the third year 
 and the seventh year respectively of the term granted by 
 letters patent issued for the United Kingdom nnder the said 
 Patent Law Amendment Act, 1852, and the condition of such 
 letters patent for England, or Scotland or Ireland shall be 
 varied accordingly. 
 
 V. The stamp duties hereby granted shall be under the 
 care and management of the Commissioners of Inland 
 Revenue ; and the several rules, regulations, provisions, 
 penalties, clauses, and matters contained in any Act now or 
 hereafter to be in force with reference to stamp duties shall 
 be applicable thereto. 
 
 VI. The said Commissioners of Inland Revenue shall pre- 
 pare stamps impressed upon adhesive paper, of the amounts 
 following, that is to say, twopence, fourpence, eightpence, and 
 one shilling, to be used only in respect of the stamp duties on 
 the office copies of documents and on the certificates of 
 searches and inspections mentioned in the schedule to this 
 Act: sach adhesive stamps of proper amounts to be affixed 
 by the clerk of the Commissioners of Patents for inventions 
 to such office copies of documents and certificates of searches 
 and inspections as aforesaid; and immediately after such 
 affixing he shall obliterate or deface such stamps by impress- 
 ing thereon a seal to be provided for that purpose, but not so 
 as to prevent the amount of the stamp from being ascer- 
 tained ; and no such office copy or certificate shall be deli- 
 vered out until the stamps thereon shall be obliterated or 
 defaced as aforesaid. 
 
 VII. The condition contained in any letters patent granted 
 under the said Patent Law Amendment Act, 1852, and before 
 the passing of this Act for making such letters patent void 
 at the expiration of three years and seven years respectively 
 from the date thereof, unless there be paid before the expira- 
 tion of the said three years and seven years respectively, the 
 sums of money and stamp duties by the said Patent Law 
 Amendment Act, 1862, required in this behalf, shall be 
 deemed to be' satisfied and complied with by payment of the 
 like stamp duties as would have been required if such letters 
 
STATUTES 16 VICT. C. 5. 
 
 397 
 
 patent had been granted after the passing of this Act, and 
 had been made subject to the condition required by this Act 
 iu lieu of the said condition therein contained ; and the pro- 
 vision hereinbefore contained concerning the endorsement 
 on the letters patent or duplicate, and on the warrant for the 
 same letters patent, of a certificate of the production of the 
 letters patent or duplicate properly stamped, shall be appli- 
 cable in the case of such letters patent granted before the 
 passing of this Act. (a) 
 
 IX. The word " duplicate " shall be construed to mean 
 in this Act such letters patent as may be issued under the 
 twenty-second section of the Patent Law Amendment Act, 
 1852, in case of any letters patent being destroyed or lost. 
 
 X. This Act and the Patent Law Amendment Act, 1852, 
 shall be construed together as one Act. 
 
 The Schedule op 
 
 Stamp Duties to be 
 THIS Act befees. 
 
 Paid to which 
 
 £ 
 5 
 6 
 5 
 5 
 5 
 
 On petition for grant of letters patent 
 
 On certificate of record of notice to proceed 
 
 On warrant of law officer for letters patent 
 
 On the sealing of letters patent . 
 
 On specification ..... 
 
 On the letters patent or a duplicate thereof, 
 
 before the expiration of the third year 
 On the letters patent or a duplicate thereof, 
 
 before the expiration of the seventh year 
 On certificate of record of notice of objections 
 On certificate of every search and inspection 
 On certificate of entry of assignment or licence 
 On certificate of assignment or licence 
 On application for disclaimer 
 On caveat against disclaimer 
 On office copies of documents, for every ninety 
 
 words ........ 
 
 (a) Section 8, which relates to the purchase of indexes from Mr 
 Woodcroft, has been omitted. 
 
 100 
 
 
 
 2 
 
 
 
 
 
 1 
 
 
 
 5 
 
 
 
 5 
 
 5 
 
 
 
 2 
 
 
 
 
 
 2 
 
 m Mr. 
 
 Beunet 
 
 As to the word 
 " duplicate." 
 
 This Act and 
 15 & 16 Vict, 
 c. 83 to be 
 construed 
 together. 
 
 d. 
 
 
 
 
 
 
 
 50 
 
398 STATUTES 16 & 17 VICT. c. 115. 
 
 16 & 17 Vict. c. 115. 
 
 An Act to amend certain Provisions of the Patent Law 
 Amendment Act, 1852, in respect of the Transmission 
 of Certified Oopies of Letters Patent and Specifications 
 to certain Offices in Ediniu/rgh and Dublin, and other- 
 wise to amend the said Act. [20th August, 1863.] 
 
 15 & 16 Vict. A 7[ WHEREAS it is expedient to amend certain provisions 
 
 "■ ' V V of the Patent Law Amendment Act, 1852, in respect 
 
 of the transmission of certified copies of letters patent and 
 
 specifications to certain offices in Edinbnrgh and Dnblin, and 
 
 otherwise to amend the said Act, be it therefore enacted as 
 
 follows : 
 
 Sec. 33, and I. Section thirty-three of the said Act and such part of 
 
 recited Ac? section twenty-eight of the said Act as directs that in case 
 
 repealed. reference is made to drawings in any specification deposited 
 
 or filed under the said Act an extra copy of such drawings 
 
 should be left with such specification, shall be repealed. 
 
 Copies of pro- II. The Commissioners shall cause true copies of all pro- 
 
 ficfations tolbe' '^sional specifications left at the office of the Commissioners 
 
 open to inspeo- to be open to the inspection of the public, at such times after 
 tion at the ^ r ' 
 
 Commission- the date of the record thereof respectively, as the Commis- 
 ers office. sioners shall by their order from time to time direct. 
 
 Acopyofeyery III. A true copy under the hand of the .patentee or appli- 
 lto"''und^er'the "^1*; o^" agent of the patentee or applicant, of every speci- 
 handofthe fication and of every complete specification, with the draw- 
 applicant to be ™gs accompanying the same, if any, shall be left at the office 
 left at Com- ^f ^jjg Commissioners on filing such specification or complete 
 
 missioners _ ^ a r r 
 
 office. specification. 
 
 Copies or IV. Printed or manuscript copies or extracts, certified and 
 
 eXb'aCtS of ni-in T n 1 /~l • • 
 
 letters patent, sealed With the seal of the Commissioners, of letters patent, 
 and' eTw^*^ specifications, disclaimers, memoranda of alterations, and all 
 filed at Com- other documents recorded and filed in the Commissioners' 
 
 lUl 991 OTIGI* ft 
 
 office to be office, or in the office of the Court of Chancery appointed for 
 
 received m Qj^^ filing of specifications, shall be received in evidence in all 
 evidence. . . 
 
 proceedings relating to letters patent for inventions in all 
 
STATUTES 16 & 17 VICT. c. 115. 399 
 
 courts whatsoever witMn the United Kingdom of Great Britain 
 and Ireland, the Channel Islands, and Isle of Man, and Her 
 Majesty's colonies and plantations abroad without farther 
 proof or production of the originals. 
 
 V. Certified printed copies, under the seal of the Commis- Certified 
 
 sioners, of all specifications and complete specifications, and of speoifica- 
 
 fac-simile printed copies of the drawings accompanying the tions, &c., 
 
 same, if any, disclaimers, and memoranda of alterations filed Commission- 
 
 or hereafter to be filed, under the said Patent Law Amend- transmitted to 
 
 ment Act, shall be transmitted to the office of the Director of ^^ Director of 
 
 Chancery in 
 Chancery in Scotland and to the Enrolment Office of the Scotland, and 
 
 Court of Chancery in Ireland within twenty-one days after chancerv'hi ° 
 
 the filing thereof respectively, and the same shall be filed in Ireland, wHcli 
 
 the office of Chancery in Scotland and Ireland respectively, dence, -without 
 
 and certified copies or extracts from such documents shall be production of 
 
 ^ _ _ ongmals. 
 
 furnished to all persons requiring the same, on payment of 
 
 such fees as the Commissioners shall direct ; and such copies 
 or extracts shall be received in evidence in all courts in 
 Scotland and in Ireland respectively in all proceedings re- 
 lating to letters patent for inventions without further proof 
 or production of the originals. 
 
 VI. Where letters patent have not been sealed during the Lord Chan- 
 continuance of the provisional protection on which the same ^n^ases'inay 
 is granted, provided the delay in such sealing has arisen from seal letters 
 accident, and not from the neglect or wilful default of the expiration of 
 applicant, it shall be lawful for the Lord Chancellor, if he P™™*^^' 
 shall think fit, to seal such letters patent at any time after 
 
 the expiration of such provisional protection, whether such 
 expiration has happened before or shall happen after the 
 passing of this Act, and to date the sealing thereof as of any 
 day before the expiration of such provisional protection, and 
 also to extend the time for the filing of the specification 
 thereon ; and where the specification, in pursuance of the 
 condition of any letters patent, has not been filed within the 
 time limited by such letters patent, provided the delay ia 
 such filing has arisen from accident, and not from the neglect 
 or wilful default of the patentee, it shall be lawful for the 
 
400 
 
 STATUTES 16 & 17 VICT. C. 115, 
 
 Removing 
 doubtB as to 
 provision of 
 15 & 16 Vict. 
 c. 83, respect- 
 ing tne makine 
 and sealing of 
 new letters 
 patent for a 
 further term. 
 
 15 & 16 Vict. 
 c. 83 and this 
 Act to be con- 
 strued as one 
 Act. 
 
 Lord Chancellor, if he shall think fit, to extend the time for 
 the filing of such specification, whether the default in such 
 filing has happened before or shall happen after the passing 
 of this Act : Provided always, that except in any case that 
 may have arisen before the passing of this Act, it shall not 
 be lawful for the Lord Chancellor to extend the time for the 
 sealing of any letters patent, or for the filing of any specifi- 
 cation beyond the period of one month. 
 
 VII. And whereas doubts have arisen whether the pro- 
 vision of the Patent Law Amendment Act, 1852, for the 
 making and sealing new letters patent for a further term, in 
 pursuance of Her Majesty's order in council, in the cases 
 mentioned in section forty of the said Act, extend to the 
 making and sealing of new letters patent in the manner by 
 such Act directed where such new letters patent are granted 
 by way of prolongation of the term of letters patent issued 
 before the commencement of the said Act : and whereas it is 
 expedient that such new letters patent granted by way of 
 prolongation shall be granted according to the provisions of 
 the said Patent Law Amendment Act; be it declared and 
 enacted, that where Her Majesty's order of Council for the 
 sealing of new letters patent shall have been made after the 
 commencement of the said Act, the said provision of the said 
 Act for making and sealing in manner aforesaid of new 
 letters patent shall extend, and shall as from the commence- 
 ment of the said Act be deemed to have extended, to the 
 makiag and sealing in manner aforesaid of new letters patent 
 for a further term, as well .where the original letters patent 
 were made before as where such original letters patent have 
 been issued since the commencement of the said Act. 
 
 VIII. This Act and the Patent Law Amendment Act, 
 1852, shall be construed together as one Act. 
 
STATUTEI^ 22 VICT. C. 13. 401 
 
 22 Vict. c. 13. 
 
 An Act to amend the Law concerning Patents for Inven- 
 tions with respect to Inventions for Improvements in 
 Instruments and Munitions of War. 
 
 [Stli of April, 1859.] 
 
 WHEREAS in some cases of inventions for improve- 
 ments in instruments or munitions of war it may be 
 important to the public service that the nature of the inven- 
 tion should not be published, and it is therefore expedient to 
 amend the law concerning letters patent for inventions : Be 
 it enacted by the Queen's most excellent Majesty, by and 
 "with the advice and consent of the Lords Spiritual and 
 Temporal and Commons in this present Parliament assem- 
 bled, and by the authority of the same as follows : — 
 
 I. Any inventor of any improvement in instruments or Improvements 
 munitions of war, or the executors, administrators, or assigns ^^ munition" of 
 
 of such inventor, may, for valuable consideration or without, '^^^ ^^7 ^^ 
 
 SiSsi^nsd Dv 
 assign to Her Majesty's principal Secretary of State for the inventors to 
 
 War Department, on behalf of Her Majesty, all the benefits of l^g^foTvvlr 
 the invention, and of all letters patent obtained or to be 
 obtained for the same, and such Secretary of State may be a 
 party to the assignment, and such assignment shall he 
 efiectual to vest the benefit of such invention and of such 
 letters patent in the said Secretary of State for the time being 
 on behalf of Her Majesty at law and in equity ; and the 
 benefit of such invention and of such letters patent shall be 
 deemed property acquired by the said Secretary of State on 
 behalf of Her Majesty ; and all covenants and agreements 
 contained in such assigimient for giving full effect thereto, 
 and for keeping the invention secret, and otherwise in relation 
 thereto, shall be valid and efiectual (notwithstanding any want 
 of valuable consideration), and may be enforced and pro- 
 ceeded upon by the said Secretary of State for the time being 
 accordingly, and all actions, suits, and proceedings in relation 
 thereto may be instituted and conducted by such Secretary of 
 
 D D 
 
402 STATUTES 22 VICT, c. 13. 
 
 state for tiie time being, who shall have all such rights, 
 priTileges, and prerogatives in relation thereto as by law 
 provided in the case of actions, suits, and proceedings con- 
 cerning property under his care, control, and disposition. 
 Foregoing II. The foregoing enactment shall extend to render valid 
 
 extend to ° ^^^ eflfectual, and be otherwise applicable to and in respect 
 
 assignments of, any snch assignment as aforesaid made before the passing 
 already made. „' . . , , , . ■, . 
 
 of this Act, and the covenants and agreements contained in 
 
 such assignment, as well as any such assignment to be 
 made thereafter, and the covenants and agreements therein 
 contained. 
 Secretary of III. Where any such assignment as aforesaid has been made 
 
 may certify "to *° ^^^ ^^^^ Secretary of State, he may at any time before the 
 Commissioners filing of the petition for the grant of letters patent for 
 of Patents that , . . ^ „ , „,. „ , ..-,,,. 
 
 the invention the invention, or after the nlmg of such petition and beiore 
 
 seoKt^ ""^ '"'''* publication of the provisional specification (if any), if he 
 think it for the benefit of the public service that the par- 
 ticulars of the invention, and of the manner in which the 
 same is performed, should be kept secret, certify the fact of 
 such assignment having been so made, and his opinion to the 
 efiect aforesaid in writing under his hand to the commis- 
 sioners of patents for inventions. 
 Where the IV. Where the said Secretary of State certifies as aforesaid. 
 
 State for V/etT ^^^ petition for letters patent for the invention, the declara- 
 has so certified, tion accompanving such petition, and the provisional speci- 
 petitionfor if •/+• / +1, u \ ci j 
 
 letters patent tication or complete specmcation (as the case may be), filed or 
 
 *'"th*th l^*fc ^^^^ therewith, and any specification to be filed in pursuance 
 of the patents of the condition of any letters patent for such invention, and 
 under the^seal ^^^ disclaimers and memoranda of alterations to be filed in 
 of Secretary of relation to such letters patent, and any drawings accompany- 
 ing any of the documents aforesaid, and any copies of any 
 such documents or drawings, or where the said Secretary of 
 State so certifies after the said petition has been filed, such of 
 the said documents and drawings as may be filed after his so 
 certifying, and the copies thereof, shall, in lieu of being filed 
 or left in the ordinary manner in the office of the commis- 
 sioners, or in the office appointed for that purpose under 
 
STATUTES 22 VICT. c. 13. 403 
 
 " The Patent Law Amendment Act, 18641," be delivered to 
 the clerk of the patents in a packet sealed with the seal of 
 the said Secretary of State. 
 
 V. Such packet shall at all times after the delivery thereof Such packet to 
 to the clerk of the patents until the expiration of the term or geauTor under 
 any extended term for which letters patent for the invention the seal of the 
 may be granted, be kept by him sealed up as aforesaid, or sioners. 
 under the seal of the commissioners, save when it may be ne- 
 cessary to have access to the documents therein contained, 
 
 or any of them, for the purpose of recording and endorsing 
 the day of the filing thereof, or for the purpose of any re- 
 ference to one of the law officers, either in relation to the 
 same or any other invention, but in any such case as afore- 
 said the clerk of the patents shall not part with the care or 
 custody of the said packet, or any of the said documents, 
 save as may be required by one of the law officers for the pur- 
 poses of any such reference, and shall use such precautions as 
 may be necessary to prevent the contents or particulars of 
 such documents being improperly disclosed. 
 
 VI. Such sealed packet shall be delivered at any time during Such sealed 
 the continuance of any such letters patent to the said Secretary ^?!^^^ *° °® 
 of State, or to any person having authority to receive the demand to 
 same on his behalf, on demand in writing under the hand of state or by 
 the said Secretary of State, or to such person as the Lord order of the 
 Chancellor may order, and shall if and when the same is re- cellor. 
 turned to the commissioners be again sealed up, and kept 
 
 under seal as aforesaid. 
 
 VII. Such sealed packet as aforesaid shall at the end of the At the expira- 
 
 term or extended term for which any letters patent for the '^t^nt gealed 
 
 invention to which the documents in such packet relate, be packet to be 
 
 (]g2iv6r6(i to 
 delivered up to the said Secretary of State, or to any person Secretary of 
 
 having authority to receive the same on his behalf. State. 
 
 VIII. Where the said Secretary of State certifies as Where Secre- 
 aforesaid after the filing of the petition, and before the pub- citifies after 
 lication of the provisional specification (if any), such peti- filing of peti- 
 tion and the declaration accompanying such petition and the ments already 
 provisional specification and drawings relating to the inven- ^^^^ *° ''^ P"' 
 
 packet. 
 
404 
 
 STATUTES 22 VICT. C. 13. 
 
 Copy of speci- 
 fication, &c., 
 not to be sent 
 to Scotland or 
 Ireland, or 
 
 Eublished ; 
 ut, otherwise, 
 proTisions of 
 Patent Acts 
 to apply. 
 
 No scire facias 
 to be brought. 
 
 Secretary of 
 State may 
 •waive the 
 benefit of this 
 Act as respects 
 any invention. 
 
 Communica- 
 tions of in- 
 vention to 
 Secretary of 
 State, &c., not 
 to prejudice 
 letters patent. 
 
 Congti'uction 
 of " Secretary 
 of State." 
 
 tion which may have been filed or left in any such office as 
 aforesaid, and all copies thereof in any such office, shall be 
 forthwith placed in a packet, sealed with the seal of the 
 commissioners, and every such packet shall be subject to all 
 the provisions of this Act concerning any sealed packet de- 
 livered to the clerk of the patents. 
 
 IX. No copy of any specification or other document or 
 drawing by this Act required to be kept under seal, shall be 
 transmitted to Scotland or Ireland, or be printed, published, 
 or sold, or be open to the inspection of the public ; but save as 
 in this Act otherwise directed, the provisions of the " Patent 
 Law Amendment Act, 1852," and any Act amending the same, 
 shall extend and be applicable to and in respect of every 
 such specification and other document and drawing as afore- 
 said, and the letters patent and invention to which the same 
 relates, and this Act and the " Patent Law Amendment Act, 
 1862," shall be construed together as one Act. 
 
 X. It shall not be lawful for any person to take proceed- 
 ings, by scire facias or otherwise, to repeal any letters patent 
 for an invention in relation to which the said Secretary of 
 State has certified as aforesaid. 
 
 XI. The Secretary of State may at any time by writing 
 under his hand waive the benefit of this Act with respect to 
 any particular invention, and the document and matters re- 
 lating thereto shall be thenceforth kept and dealt with in the 
 ordinary way. 
 
 XII. The communication of any invention for any improve- 
 ment in instruments or munitions of war to the said Secretary 
 of State, or to any person or persons authorized by him to in- 
 vestigate 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 letters patent for the same. 
 
 XIII. In the construction of this Act, " Her Majesty's 
 Principal Secretary of State for "War Department" shall 
 mean Her Majesty's principal Secretary of State for the time 
 being, to whom Her Majesty shall think fit to entrust the 
 seals of the War Department. 
 
STATUTES 33 & 34, VICT. c. 27. 405 
 
 33 & 34 ViOT. c. 27. 
 
 An Act for the Protection of Inventions exhibited at Inter- 
 national Exhibitions in the United Kingdom. 
 
 [14th of July, 1870.] 
 
 WHEREAS it is expedient that such protection as is 
 hereinafter mentioned should be afiforded to persons 
 desirous of exhibiting new inventions at exhibitions to be held 
 in the United Kingdom. 
 
 Be it enacted by the Queen's most Excellent Majesty, by 
 and with the advice and consent of the Lords Spiritual and 
 Temporal and Commons in this present parliament assembled, 
 and by the authority of the same as follows (that is to say) : 
 
 I. This Act may be cited as " The Protection of Inventions Short title. 
 Act, 1870." 
 
 II. The exhibition of any new invention at any international Exhibition of 
 exhibition shall not, nor shall the publication during the no7t™preiu°°^ 
 period of the holding of such exhibition, of any description of dice patent 
 such invention, nor shall the user of such invention for the 
 
 purposes of such exhibition, and within the place where the 
 same may be held, nor shall the user of such iavention else- 
 where by any other person without the privity and consent of 
 the true and first inventor thereof, prejudice the right of the 
 exhibitor thereof, he being the true and first inventor, within 
 six months from the time of the opening of such exhibition 
 to leave at the office of the Commissioners of Patents a peti- 
 tion for the grant of letters patent for such invention, and 
 the declaration accompanying the same, and a provisional 
 specification or a complete specification thereof, under the 
 " Patent Law Amendment- Act, 1852," and the Acts amending 
 the same, or to obtain provisional protection or letters patent 
 for such invention, in pursuance of those Acts, nor invalidate 
 any letters patent which may be granted for such invention 
 upon any such petition as aforesaid. 
 
406 RULES AND BBGULATIONS. 
 
 Rules and Regulations. 
 
 Made hy the Commissioners of Patents for Inventions and hy 
 the Lord Chancellor and the Master of the Bolls winder the 
 Acts 15 8r 16 Vict. C..83 and 16 8r 17 Yict. c. 115. 
 
 First set of Bules and Begulations imder the Act 15.^ 16 Vict, 
 c. 83 for the passing of Letters Patent for indentions. 
 
 By the Right Honourable Edward Burtensliaw, Lord St. 
 Leonards, Lord High Chancellor of Great Britaia, The 
 Right Honourable Sir John RomUly, Master of the Rolls, 
 Sir Frederic Thesiger, Her Majesty's Attorney General, and 
 Sir Pitz Roy Kelly, Her Majesty's Solicitor General, being 
 fonr of the Commissioners of Patents for Inventions nnder 
 the said Act. 
 
 Whereas a commodious office is forthwith intended to be 
 provided by the Crown as the Great Seal Patent Office and 
 the Commissioners of Her Majesty's Treasury have under the 
 powers of the said Act appointed such office as the office also 
 for the purpose of the said Act. 
 
 I. All petitions for the grants of letters patent and all 
 declarations and provisional specifications shall be left at the 
 said Commissioners' office and shall be respectively written 
 upon sheets of paper of twelve inches in length by eight inches 
 and a half in breadth, leaving a margin of one inch and a half 
 on each side of each page in order that they may be bound iu 
 the books to be kept in the said office. 
 
 II. The drawings accompanying provisional specifications 
 shall be made upon a sheet or sheets of parchment paper or 
 cloth each of the size of twelve inches in length by eight 
 inches and a half in breadth or of the size of twelve inches in 
 breadth by seventeen inches in length, leaving a margin of 
 one inch on every side of each sheet. 
 
 III. Every provisional protection of an invention allowed 
 by the law officer shall be forthwith advertised in the London 
 Gazette, and the advertisement shall set forth the name and 
 address of the petitioner, the title of his invention, and the 
 date of the application. 
 
RULES AND REGULATIONS. 407 
 
 IV. Every invention protected by reason of the deposit of 
 a complete specification shall be forthwith advertised in the 
 London Gazette and the advertisement shall set forth the name 
 and address of the petitioner, the title of the invention, the 
 date of the application, and that a complete specification has 
 been deposited. 
 
 V. Where a petitioner applying for letters patent after pro- 
 visional protection or after deposit of a complete specification, 
 shall give notice in -writing at the office of the Commissioners 
 of his intention to proceed with his application for letters 
 patent the same shall forthwith be advertised in the London 
 Oazette, and the advertisement shall set forth the name and 
 address of the petitioner and the title of his invention ; and 
 that any persons having an interest in opposing such applica- 
 tion are to be at liberty to leave particnlars in writing of their 
 objections to the said application at the office of the Commis- 
 sioners within twenty-one days after the date of the Gazette 
 in which such notice is issued. 
 
 VI. The Lord Chancellor having appointed the Great Seal 
 Patent Office to be the Office of the Court of Chancery for the 
 filing of specifications, the said Great Seal Patent Office and 
 the Office of the Commissioners shall be combined ; and the 
 clerk of the patents for the time being shall be the clerk of the 
 Commissioners for the purposes of the Act. 
 
 VII. The office shall be open to the public every day, 
 Christmas Day and Good Friday excepted, from ten till four 
 o'clock. 
 
 VIII. The charge for office or other copies of documents in 
 the office of the Commissioners shall be at the rate of two- 
 pence for every ninety worda., 
 
 (Signed) 
 
 St, Leonaeds, C. 
 John Romillt, M. R. 
 Peed-.Thesigbe, a. G. 
 FiTZ Rot Kelly, S. G. 
 Dated the 1st of October, 1862. 
 
408 RULES AND EEGULATIONS. 
 
 By the Right Honourable Ed-ward Burtenshaw, Lord St. 
 Leonards, Lord High Chancellor of Great Britain, and the 
 Right Honourable Six John Romilly, Master of the Rolls. 
 
 Ordered that there shall be paid to the law officers and to 
 their clerks the following fees : — 
 
 By the person opposing a grant of letters patent : 
 
 £ s. d. 
 
 To the law officer 2 12 6 
 
 To his clerk 12 6 
 
 To his clerk for summons , . , .050 
 
 By the petitioner on the hearing of the case of opposition : 
 
 £ s. d. 
 
 To the law officer 2 12 6 
 
 To his clerk 12 6 
 
 To his clerk for summons . . . .050 
 
 By the petitioner for the hearing previous to the fiat of 
 the law officer allowing a disclaimer or memorandum of altera- 
 tion in letters patent and specification : 
 
 £ s. d. 
 
 To the law officer 2 12 6 
 
 To his clerk 12 6 
 
 By the person opposing the allowance of such disclaimer or 
 memorandum of alteration on the hearing of the case of oppo- 
 sition : 
 
 £ s. d. 
 
 To the law officer 2 12 6 
 
 To hia clerk 12 6 
 
 By the petitioner for the fiat of the law officer allowing a 
 disclaimer or memorandum of alteration in letters patent and 
 specification. 
 
 £ s. d. 
 
 To the law officer 3 3 
 
 To his clerk 12 6 
 
 (Signed) St. Leonards, C. 
 
 John Romillt, M. R. 
 Dated the 1st of October, 1852. 
 
EULES AND REGULATIONS. 409 
 
 Ordered by the Riglit Honourable Edward Burtenshaw, 
 Lord St. Leonards, Lord High Ohajicellor of Great Britain. 
 
 L All specifications in pursuance of the condition of letters 
 patent and all complete specifications accompanying petitions 
 and declarations before grant of letters patent shall be filed 
 in the Great Seal Patent Office. 
 
 II. All specifications in pursuance of the conditions of 
 letters patent and all complete specifications accpmpanying 
 petitions for the grant of letters patent shall be respectively 
 written bookwise upon a sheet or sheets of parchment each of 
 the size of twenty-one inches and a half in length by fourteeu 
 inches and three-fourths of an iuch in breadth ; the same 
 may be written upon both sides of the sheet, but a margin 
 must be left of one iuch and a half on every side of each 
 sheet. 
 
 III. The drawings accompanying such specification shall 
 be made upon a sheet or sheets of parchment each of the size 
 of twenty-one inches and a half in length by fourteen inches 
 and three fourths of one inch in breadth, or upon a sheet or 
 sheets of parchment, each of the size of twenty-one inches and 
 a half in breadth by twenty-nine inches and a half in lengfth, 
 leaving a margin of one inch and a half on every side of each 
 sheet. 
 
 IV. The charge for office or other copies of documents in 
 the Great Seal Patent Office shall be at the rate of two pence 
 for every ninety words. 
 
 (Signed) St. Leonards, 0. 
 
 Dated the 1st of October, 1862, 
 
 Note. — It is recommended to applicants and patentees to 
 make their elevation drawings according to the scale of one 
 inch to a foot. 
 
410 IfULES AND REGULATIONS. 
 
 Seeond set of Bules and Begulaiions nmd&r f^e ^c< 15 ^ 16 
 Tvyl. c. 83 /or the passing of letters patent for inventions. 
 
 By tlie Right Honourable Edward Burtensliaw, Lord St. 
 Leonards, Lord High Chancellor of Great Britain, the Right 
 Honourable Sir John Romilly, Master of the Rolls, Sir 
 Frederic Thesiger, Her Majesty's Attorney General, and Sir 
 Fitz Roy Kelly, Her Majesty's Solicitor General, being four 
 of the Commissioners of Patents for Inventions nnder the 
 said Act. 
 
 I. The office of the Directory of Chancery in Scotland 
 being the office appointed by the Act for the recording of 
 transcripts of letters patent shall be the office of the Commis- 
 sioners in Edinburgh for the filing of copies of specifications, 
 disclaimers, memoranda of alterations, provisional specifica- 
 tions, and certified duplicates of the register of proprietors. 
 
 II. All such transcripts, copies, and certified duplicates 
 shall be bound in books and properly indexed, and shall be 
 open to the inspection of the public at the said office every 
 day from ten to three o'clock. 
 
 III. The charge for office copies of such transcripts, copies, 
 and certified duplicates recorded and filed in the said office 
 shall be at the rate of twopence for every ninety words. 
 
 IV. The enrolment office of the Court of Chancery in 
 Dublin being the office appointed by the Act for the enrol- 
 ment of transcripts of letters patent shall be the office of the 
 Commissioners in Dublin for the filing of copies of specifica- 
 tions, disclaimers, memoranda of alterations, provisional speci- 
 fications, and certified duplicates of the register of proprietors. 
 
 V. All such transcripts, copies, and certified duplicates shall 
 be bound in books and properly indexed, and shall be open 
 to the inspection of the public at the said Enrolment Office 
 every day, Christmas Day and Good Friday excepted, from 
 ten to three o'clock. 
 
 VI. The charge for office copies of such transcripts, copies, 
 and certified duplicates enrolled and filed as aforesaid shall 
 be at the rate of twopence for every ninety words. 
 
RULES AND REGULATIONS. 411 
 
 VII. No warrant is to be granted for the sealing of any 
 letters patent which contains two or more distinct substan- 
 tive inventions, (a) 
 
 VIII. A provision is to be inserted in all letters patent in 
 respect whereof a provisional and not a complete specification 
 shall be left on the application for the same, requiring the 
 specification to be filed within six months from the date of 
 the application. 
 
 IX. No amendment or alteration at the instance of the appli- 
 cant will be allowed in a provisional specification after the 
 same has been recorded, except for the correction of clerical 
 errors or of omissions made per inouricum. 
 
 X. The provisional specification mnst state distinctly and 
 intelligibly the whole nature of the invention, so that the law 
 officer may be apprised of the improvement and of the means 
 by which it is to be carried into efiect. 
 
 (Signed) St. Leonaeds, 0. 
 
 John Eomiht, M. E. 
 Feed. Thesigee, A. G. 
 FiTz Rot Kelly, S. G. 
 Dated the 15th October, 1852. 
 
 Ordered by the Right Honourable Edward Burtenshaw Lord 
 St. Leonards, Lord High Chancellor of Great Britain. 
 
 Every application to the Lord Chancellor against or in 
 relation to the sealing of letters patent shall be by notice, 
 and such notice shall be left at the commissioners' office, 
 and shall contain particulars in writing of the objections to 
 the sealing of such letters patent. 
 
 (Signed) St. Leonaeds, G. 
 
 Dated the 15th of October, 1852. 
 
 {a) This rule was rescinded by the third set of rules of the 12th 
 December, 1853. 
 
412 EULES AND REGULATIONS. 
 
 Third Set of Bules amd BegulaUons under the Act 15 ^ 16 
 Vict. c. 83, for the passimg of letters patent for inventions, 
 ctnd under the Act of the 16 ^ 17 Vict. c. 115. 
 
 By the Right Honourable Robert Monsey, Lord Cran- 
 worth, Lord High Chancellor of Great Britain, the Right 
 Honourable Sir John RomUly, Master of the RoUs, Sir 
 Alexander James Edmund Oockbum, Her Majesty's At- 
 torney General, and Sir Richard Bethell, Her Majesty's 
 Solicitor General, being four of the Commissioners of Patents 
 for Inventions under the said Act of the 15 & 16 Vict. c. 83. 
 
 It is ordered as follows : — 
 
 Rule 7 of the Second Set of Rules and Regulations of the 
 Commissioners, dated the 15th October, 1852, is hereby 
 rescinded. 
 
 I. Every application for letters patent, and every title of 
 invention and provisional specification, must be limited to 
 one invention only, and no provisional protection will be 
 allowed or warrant granted where the title or the provisional 
 specification embraces more than one invention. 
 
 II. The title of the invention must point out distinctly and 
 specifically the nature and object of the invention. 
 
 III. The copy of the specification or complete specification, 
 directed by the Act 16 & 17 Vict. c. 115, s. 3, to be left at 
 the office of the commissioners on filing the specification or 
 complete specification, shall be written upon sheets of brief or 
 foolscap paper, briefwise and upon one side only of each 
 sheet. The extra copy of drawings, if any, left with the 
 same must be made as heretofore and according to the direc- 
 tions contained in Rule III. of the Lord Chancellor, dated 
 the 1st of October, 1852. 
 
 rV. The co'py of the provisional specification, to be left at 
 the office of the commissioners, on depositing the same, shall 
 be written upon sheets of brief or foolscap paper briefwise 
 and upon one side only of each sheet. The extra copy of 
 drawings, if any, left with the same must be made as hereto- 
 
EULES AND REGULATIONS. 413 
 
 fore and according to the directions contained in Rule II. of 
 the commissioners, dated the 1st October, 1852. 
 
 V. All specifications, copies of specifications, provisional 
 specifications, petitions, notices, and other documents left at 
 the office of the commissioners, and the signatures of the 
 petitioners or agents thereto, must be written in a large and 
 legible hand. 
 
 VI. In the case of all petitions for letters patent left at the 
 office of the commissioners after the 3Ist day of December, 
 1853, the notice of the applicant of his intention to proceed 
 for letters patent for his invention shall be left at the office 
 of the commissioners eight weeks at the least before the 
 expiration of the term of provisional protection thereon ; and 
 no notice to proceed shall be received unless the same shall 
 have been left in the office eight weeks at the least before the 
 expiration of such provisional protection, and the application 
 for the warrant of the law officer and for the letters patent 
 must be made at the office of the commissioners twelve clear 
 days at least before the expiration of the term of provisional 
 protection; and no warrant or letters patent shall be pre- 
 pared unless such application shall have been made twelve 
 clear days at the least before the expiration of such pro- 
 visional protection : Provided always, that the Lord Chan- 
 cellor may in either of the above cases, upon special circum- 
 stances, allow a further extension of time on being satisfied 
 that the same has become necessary by accident, and not 
 from neglect or wilful default of the applicant or his agent. 
 
 (Signed) Ceawwoeth, C. 
 
 John Romillt, M. R. 
 a. j. b. cocebuen, a. g. 
 
 RiCHAED BeTHELL, S. G. 
 
 Dated the 12th of December, 1853. 
 
414 RULES AND EEGULATIONS. 
 
 Order in respect of Applications to the Lord Chancellor to extend 
 the time for sealing Letters Patent. 
 
 By the Eight Honourable Robert Monsey Lord Cranworth, 
 Lord High Chancellor of Great Britain. 
 
 Whereas by the Act 16 & 17 Vict. c. 115 the Lord Chan- 
 cellor is empowered to extend the time for the sealing of 
 letters patent for an invention, and for the filing of the speci- 
 fication thereon limited to the period of one month after the 
 expiration of the six months of provisional protection of such 
 invention, provided the delay in sealing such letters patent 
 and in filing such specification has arisen from accident, and 
 not from the neglect or wilful defaiult of the applicant, 
 
 It is ordered as follows : — 
 
 Every petition addressed to the Lord Chancellor praying 
 for the extension of time for the sealing of letters patent a,nd 
 for the filing of the specification thereon, under the provisions 
 of the Act of the 16 & 17 Vict. c. 115, and the affidavit 
 accompanying the same, shall be left at the office of the 
 Commissioners of Patents. And in every case where the 
 delay in sealing such letters patent and in filing such speci- 
 fication is alleged to have been caused by adjourned hearings - 
 of objections to the grant of such letters patent before the 
 law officer to whom such objections may have been referred, 
 the petitioner, before leaving his petition as aforesaid, shall 
 obtain the certificate of such law officer to the efiect that the 
 allegations in respect of such adjourned hearings and causes 
 of delay are, in the opinion of such law officer, correct, and 
 that the delay arising from such adjourned hearings has not 
 been occasioned by the neglect or default of the petitioner. 
 And such certificate shall be written at the foot of or shall 
 be annexed to such petition. 
 
 (Signed) Ckan WORTH, C. 
 
 Dated this 17th day of July, 1854. 
 
RULES AND REGULATIONS. 415 
 
 Orders in respect of eommunieations from abroad cmd provisional 
 specifications. 
 
 I. In any application for a patent which is stated to be a 
 communication, the declaration must state the name and ad- 
 dress of the party from whom it has been received in the 
 following manner : — 
 
 No. I. When declaration is made in the United Kingdom : 
 " That it has been communicated to me from abroad by 
 (here insert nam,e and address in full)." 
 
 No. 2. In other cases : " That it is a communication from 
 (A. B.) a person resident at (here insert address in full)," 
 
 II. All provisional specifications on one side only of each 
 sheet. 
 
 FiTz Rot Kelly. 
 H. M. Caiens. 
 Dated the 23rd of February, 1859. 
 
 Rules of Pbacticb befoeb the Law Opficees eespecting 
 
 DiSCLAIMEES AND MeMOEANDA OP AlTEEATIONS. 
 
 I. The person applying must present a petition to the 
 Attorney- General or Solicitor-General, stating what the pro- 
 posed disclaimer or alteration is, when a time will be appointed 
 for hearing the applicant. The petition is in general to be 
 accompanied by a copy of the original specification, and of 
 the proposed disclaimer or alteration. 
 
 II. If on the hearing the Attorney or Solicitor-General 
 should think fit to disallow the proposed alteration or dis- 
 claimer, no further proceeding is necessary. If he should 
 think fit to allow it without any advertisement, then, on 
 being applied to for the purpose, he will put his signature to 
 the fiat authorizing the clerk of the patents to make the re- 
 quired enrolment. 
 
 III. If it appears to the Attorney or Solicitor- General that 
 any advertisement or advertisements ought to be inserted, 
 then he will give such directions as he may think fit relative 
 
416 EUI/ES AND BEGULATIONS. 
 
 thereto, and viU fix any time not sooner than ten days from 
 the first publication of any such advertisement, for resuming 
 the consideration of the matter. 
 
 IV. Caveats may be lodged at any time before the actual 
 issuing of the fiat ; and any party lodging a caveat is to have 
 seven days' notice of the next meeting. 
 
 V. The fiat must be written or engrossed on the same 
 parchment with the disclaimer or alteration at the foot 
 thereof, (a) 
 
 Patent Law Amendment Act, 1852. 15 ^ 16 Vict. a. 83. 
 
 By the Eight Honourable Frederic Lord Chelmsford Lord 
 High Chancellor of Great Britain, the Right Honourable 
 John Lord Romilly, Master of the EoUs, Sir John Eolt, Her 
 Majesty's Attorney General, and John Burgess Karslake, 
 Esquire, Her Majesty's Solicitor General, being • four of the 
 Commissioners of Patents for Inventions under the said Act. 
 
 It is ordered as follows : — 
 
 After the 31st day of December, 1866, every applicant for 
 letters patent shall deliver at the office of the commissioners, 
 with his provisional specification, or (when a complete spe- 
 cification is filed with the petition and declaration) with his 
 complete specification, an abridgment, in duplicate, under 
 his hand or the hand of his agent, of such provisional or 
 complete specification. The abridgment must set forth the 
 name of the applicant, the title of the invention, and describe, 
 in as short a manner as possible, the features of novelty which 
 constitute the invention. The abridgment and the copy 
 thereof must be written upon sheets of foolscap paper, and 
 upon one side only of each page, leaving a margin of one inch 
 and a half on the left hand side of the page. 
 
 (Signed) Chelmsfoed, C. 
 
 eomillt, m. e. 
 John Eolt. 
 John B. Kaeslake. 
 
 Dated the I7th day of December, 1866. 
 
 (a) See Norman's Law of Patents. 
 
RULES AND REGULATIONS. 417 
 
 Patent Lom Amendment Ad, 1852. 16 ^ 16 Viet. c. 83. 
 
 By the Right Honourable Frederic Lord Chelmsford, Lord 
 High Chancellor of Great Britain, the Right Honourable 
 John Lord Romilly, Master of the Rolls, Sir John Rolt, Her 
 Majesty's Attorney General, and Sir John Burgess Karslake, 
 Her Majesty's Solicitor General, being four of the Commis- 
 sioners of Patents for inventions under the said Act. 
 
 It is ordered as follows : — 
 
 That on and after the 1st of July, 1867, no stamp duties 
 payable upon notices to proceed, notices of objection, or war- 
 rants and letters patent shall be received in the oflB.ce of the 
 Commissioners after 2 o'clock in the afternoon of Saturdays, 
 nor after 3 o'clock on other days : Except that on the last day 
 for the payment of any of such stamp duties they shall be 
 received up to 4 o'clock. 
 
 (Signed) Chelmsfoed, C. 
 Romilly, M. R. 
 John Rolt. 
 John B. Kabslake. 
 
 Dated the 14th day of May, 1867. 
 
 Patent Law Amendment Act, 1852. 15 ^ 16 Vict. c. 83. 
 
 By the Right Honourable William Page, Lord Hatherley, 
 Lord High Chancellor of Great Britain, the Right Honourable 
 John Lord Romilly, Master of the Rolls, Sir Robert Porrett 
 Collier, Her Majesty's Attorney General, and Sir John Duke 
 Coleridge, Her Majesty's Solicitor General, being four of the 
 Commissioners of Patents for inventions under the said Act. 
 
 It is ordered as foUows : — 
 
 Rule II. of the First Set of Rules and Regulations of the 
 Commissioners, dated the 1st October, 1852, to be altered by 
 
 E E 
 
418 RULES AND REGULATIONS. 
 
 the addition of the word " drawing " before the word " paper " 
 in the second line of the printed copy. 
 
 (Signed) Hatheelby, 0. 
 
 EOMILLT, M. R. 
 
 R. P. COLLIBE, A. G. 
 
 J. D. COLBRIDOB, S. G. 
 
 Dated the 1st day of July, 1871. 
 
 Geneeal Oedbe. (11th Febeuaet, 1873.) 
 
 I, the Right Honourable Roundell Baron Selbome, Lord 
 High Chancellor of Great Britain, do hereby in. pursuance of 
 all powers and authorities enabling me in that behalf, order 
 and direct in manner following, that is to say : 
 
 Byery order made by the Lord Chancellor upon the 
 hearing of petitions against or relating to the sealing of Let- 
 ters Patent, under the Patent Law Amendment Act, 1862, 
 15 & 16 Vict. c. 83, shall be drawn up, passed, and entered 
 by the Registrar of the Court of Chancery in attendance, and 
 an ofB.ce copy of such order shall be remitted by him with- 
 out fee to the clerk of the combined ofi&ces of the Great Seal 
 Patent Office, and the office of the Commissioners of Patents 
 for inventions, to be filed with the petition. 
 
 Selboenb, 0. 
 
 Rules to he observed in Proeeedmgs before the Privy Oouwil 
 tmder the Act 5^6 Will. IV. intituled " An Act to arniend 
 the Law touching Letters Patent for Inventions." 
 
 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 of anything 
 
RULES AND REGULATIONS. 419 
 
 made according to Ms specification, or near to or in which lie 
 resides, in case he carries on no such manufacture, or pub- 
 lished in the county where he carries on such manufacture 
 or where he lives in case there shall not be any paper pub- 
 lished in such town, that he intends to petition Her Majesty 
 under the said section, and shall in such advertisement 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 be not 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 advertisement and having lodged such notice shall be 
 entitled to have from the petitioner four weeks' notice of the 
 time appointed for the hearing. 
 
 II. A party intending to apply by petition under section 
 4 of the said Act, shall in the advertisement directed to be 
 published by the said section, 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 advertise- 
 ments to be iiiserted in the London Gazette), and that on or be- 
 fore such day ccweats must be entered ; and any person intend- 
 ing to enter a ca/veat 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 petitioner four weeks' notice of the time appointed for the 
 hearing. 
 
 III. Petitions under section 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 published in the London 
 
 IV. All petitions must be accompanied with affidavits of 
 advertisements having been inserted according to the provi- 
 
420 RULES AND REGULATIONS. 
 
 sions 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. 
 
 V. All persons entering caveats under section 4 of the said 
 Act, and all parties to any former suit or action touching let- 
 ters patent, in respect of which petitions shall have been pre- 
 sented under section 2 of the said Act, and all persons lodging 
 notice of opposition under the first of these rules, shall respect- 
 ively be entitled to be served with copies of petitions presented 
 under the said sections, and no application to fix a time for 
 hearing shall be made without affidavit of such service. 
 
 YI. All parties served with petition 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. 
 
 VII. Parties may have copies of all papers lodged in respect 
 of any application under the said Act, at their own expense. 
 
 VIII. The registrar of the Privy Council, or other officers 
 to whom it may be referred to tax the costs iacurred 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. 
 
 IX. A party applying for an extension of a patent under 
 section 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 be 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 tke expense of making six copies of any drawing therein 
 contained or referred to would be considerable, the lodging of 
 two copies only of such specification and drawing wiU be 
 deemed sufficient. 
 
 All copies mentioned in 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 
 
AUSTEIA-HUNGAEY. 421 
 
 other counsel on behalf of the Crown against granting any 
 q:pplication made nnder either the 2nd or 4th section of the 
 said Act ia case it shall be thought fit to oppose the same on 
 such behalf. 
 
 FOREIGN LAW. 
 
 AUSTEIA-HUNGAET. 
 
 AN inventor desirous of securing an exclusive right to his 
 invention in Austria-Hungary must provide himself 
 with two patents, which are however granted on a single ap- 
 plication addressed either to the Cisleithanian or Hungarian 
 Ministry of Commerce and on payment of one fee. The 
 patents thus issued are valid also in the principality of Lich- 
 tensteia. 
 
 All inventions must have for their object either (1) a new 
 industrial production ; (2) a new means of production ; or 
 (3) a new method of production. But patents will not be 
 granted for inventions which affect the preparation of food, 
 drink and medicine, nor for those which cannot be used with- 
 out injury to the interests of the state, the public health, 
 morality and safety. 
 
 A foreign invention can only be patented on condition that 
 it is still patented abroad ; and a patent for such invention 
 can only be granted to the foreign patentee or the possessor 
 of his rights in it. 
 
 Patents for improvement are granted for the improvement 
 only and not for the whole invention. 
 
 Patents are not granted for the discovery of scientific prin- 
 ciples, unless the latter are actually brought to bear upon 
 production. 
 
 One patent is never granted for two or more inventions, 
 except in cases where both or all of them are to be used in 
 the production of one and the same object. 
 
 The application for a patent must be accompanied with Pj 
 
422 FOREIGN LAW. 
 
 description and drawings and models if necessary. It must 
 be made by tbe inventor or his agent. If the invention is 
 foreign the original patent and a certified copy mnst be 
 inclosed. 
 
 The petition mnst state the title of the invention and 
 whether or not secresy is desired, and also the number of 
 years for which the patent is demanded. This number cannot 
 exceed fifteen without the special consent of the Emperor ; or 
 if the invention is already patented abroad, the erpiration of 
 the patent there granted. 
 
 The tax is as follows : For the first five years, 100 florins 
 10 krs. ; for the second five years, 200 florins 20 krs. ; for the 
 third five years, 400 florins 40 krs. Total for fifteen years, 
 700 florins 70 kr. 
 
 The provincial governor, to whom the application for a 
 patent is forwarded must see that the subject matter is such 
 that a patent can be granted and that the proper forme have 
 been observed. The application is then forwarded to the 
 Minister of Commerce. If the description is incorrect or the 
 subject not patentable, the documents are returned to the 
 applicant for correction, or as being useless, according to the 
 circumstances. 
 
 A patent authorises the patentee to take all requisite 
 measures for working his invention and selling its products, 
 and to empower others to work it for him. He may dispose 
 of his patent as he likes, by sale, testament, lease, etc., and 
 obtain foreign patents for his invention. 
 
 A renewal of patents granted for less than fifteen years may 
 be granted so long as the whole term with the extension does 
 not exceed fifteen years. 
 
 Patents become invalid : 
 
 1. In consequence of being cancelled on the following 
 grounds : 
 
 (a) When all the legal requirements have not been complied 
 with in obtaining them. 
 
 (6) On proof being given that the invention in question 
 was not new at the time when the patent was issued ; or that 
 
BAVARIA. 
 
 423 
 
 it was introduced from abroad without tte consent of the 
 foreign patentees. 
 
 (o) On proof being given by a patentee that the invention 
 is identical with one for which a patent has already been 
 granted. 
 
 (d) As being injurious to the public interests. 
 
 2. By lapsing : 
 
 (a) When the patentee fails to make use of his patent for 
 one year from the date of its issue, or later, allows two con- 
 secutive years to elapse without working his invention. 
 
 (5) On the expiration of the term for which the patent was 
 granted or renewed. 
 
 (o) In consequence of a voluntary renunciation of the rights 
 conferred by a patent. 
 
 Bataeia, 
 
 THE department by which patents and trade privileges 
 are issued is that of the Bavarian Ministry of the 
 Interior. 
 
 The longest term for the duration of a patent in Bavaria is 
 fifteen years. 
 
 The following is the scale of fees : 
 
 Fl. M. 
 
 130 
 150 
 175 
 200 
 225 
 250 
 276 
 
 Patents may be granted for all new inventions, discoveries, 
 or improvements in all branches of industry, whether consist- 
 ing of new articles, implements, or processes of manufacture. 
 The invention must be new and original aod must be likely 
 
 1 year 
 
 25 
 
 9 years 
 
 2 years 
 
 35 
 
 10 „ . . 
 
 3 „ 
 
 40 
 
 11 „ . . 
 
 4 „ 
 
 50 
 
 12 „ 
 
 5 „ 
 
 60 
 
 13 „ . . 
 
 6 „ 
 
 70 
 
 14 „ . . 
 
 7 „ 
 
 . 90 
 
 15 „ . . 
 
 8 „ 
 
 110 
 
 
424 FOREIGN LAW. 
 
 to prove beneficial to industry ; and it must be shown ttat 
 neither the article nor the process to be employed in using 
 it is Ulegal, dangerous, or injurious. 
 
 Patents may be granted for inventions patented abroad if 
 they fulfil the foregoing conditions ; such patents will only be 
 granted to the foreign patentee or his legal successor, and will 
 not be allowed to continue in force after the foreign term has 
 expired. 
 
 Applicants for patents must produce security for the novelty 
 and originality of their inventions. The patent will be re- 
 voked if it turns out not to be new and original or that the in- 
 vention has been made, applied or in any way known elsewhere. 
 
 Applicants for patents must petition the minister of the 
 interior. The petition must contain their names in full, 
 their position, residence, and domicile, and in the case of 
 foreigners those of their authorised agent. It must also 
 contain a description of the invention, and must state the 
 term of years for which the patent is required. 
 
 The legal fee and stamp duty must be paid when the 
 petition is presented, and a specification, and, if necessary, 
 drawings, models, or samples must be sent at the same 
 time. 
 
 The term may be prolonged if the patent has been ori- 
 ginally issued for less than fifteen years, but no patent will 
 be allowed to extend over a longer period than fifteen years 
 from the date of the original issue. 
 
 A patentee is at liberty to erect the necessary buildings 
 and accommodation, take in operatives, and perform all other 
 acts necessary to the exercise of the rights conferred upon 
 him by his patent, subject to due compliance with the laws, 
 statutes, and police regulations of the country. He may cede 
 his patent to others in the legally prescribed manner, or may 
 admit others to a partnership in the rights taken as a whole 
 conferred by it ; but no division of a patent with respect to 
 the right taken separately, or to the places where the privi- 
 lege is exercised is allowed. A patent will be revoked (1) if 
 facts transpire, subsequently to its issue, which, if known at 
 
BELGIUM. 425 
 
 the time, would have constituted a disqualification ; (2) or if 
 the applicant has concealed or misrepresented any important 
 part of the invention essential to its perfection ; (3) or if the 
 patentee has failed to put the invention into execution or to 
 notify the same to the Minister of the Interior within the 
 space of three years ; or in the case of patents for shorter 
 terms than sis years, within the half of the term ; or in the 
 case of an invention already patented abroad, within the space 
 of one year from the date of issue of the patent. (4) In 
 the case of patents granted for inventions patented abroad, 
 upon expiration of the foreign term. (5) In case of the 
 execution having been abandoned for more than two 
 years. (6) By resignation or failure to make use of the 
 patent. (7) By omission to notify change of proprietorship 
 to the Ministry of the Interior within the prescribed time. 
 
 Belgium. 
 
 PATENTS for inventions are granted without previous 
 examination either of the novelty or of the merit of the 
 invention, and at the risk and peril of the inventor. 
 
 The tax on patents is 10 fr. for the first year, and 20 fr. 
 for the second, with a yearly increase of 10 fr. 
 
 The government only interferes in questions of annulment 
 of patent, first, for default of payment of the annuity tax 
 within the time prescribed ; and, secondly, in the event of the 
 invention not being worked. 
 
 In the case of a patent of invention, the period is twenty 
 years ; but the time for which a patent of importation is 
 granted must not exceed the period which the original 
 patent has still to run in the countries where it was first 
 delivered. 
 
 Three kinds of patents may be granted : — A patent of 
 invention, of importation, and of improvement. A patent of 
 invention is granted to the inventor who takes out his 
 
426 FOREIGN LAW. 
 
 Belgian patent before obtaining letters patent in any other 
 country. In ttat case lie is entitled to protection for twenty 
 years. 
 
 A patent of importation is granted to an inventor who, 
 previously to lodging his demand in Belgium, has applied for 
 letters patent in any other country. The patent of importa- 
 tion is limited to the term for which the previous foreign 
 patent is granted, and expires with it. 
 
 Patents of importation may be taken out in the name of 
 the inventor or his assign duly appointed. A simple power 
 from the inventor authorising a party to take out a Belgian 
 patent in his own name suffices for the purpose, the power 
 being stamped and registered. 
 
 A patent of improvement may be obtained by a patentee 
 for an improvement on, or addition to, his previous invention. 
 The patent of improvement must be for improvement of the 
 same nature as the original invention, otherwise it would not 
 be held to be legally valid. No tax is required for a patent 
 of improvement which forms part of the original patent, and 
 expires with it. 
 
 In applying for a patent, the inventor or his attorney, 
 having paid the first year's tax, presents himself at the office 
 of the Provisional Government, where he lodges the receipt 
 for the tax, and a petition to the Minister of the Interior, 
 praying that letters patent may be granted to him, and also a 
 sealed packet, containing two copies of the specification and 
 drawings illustrating the invention. The specification may 
 be in any form, and written either in French or Flemish ; 
 the drawings may be made on paper of any size. 
 
 All transfers of patents are subject to a registration tax, 
 fixed by the law at 10 fr., but in practice a few francs more 
 are charged for additionals ; and the deed of transfer has to 
 be stamped according to the size of the paper upon which the 
 deed is drawn up. The transfer is then notified to the 
 Minister of the Interior, who has it recorded in the Patent 
 Office. 
 
 The government is now obliged to call the attention of the 
 
BELGIUM. 427 
 
 inventor to the fact that the annual tax is due, by a regis- 
 tered letter to that effect. 
 
 All patentees must work their invention, or cause it to be 
 worked, within a year of its having been worked in any other 
 country. 
 
 The government alone has power to decide what is to be 
 understood by the working of an invention, and to judge in 
 each case whether the requirements of the law have been 
 complied with. 
 
 It appears that it is not considered sufficient to import the 
 patented articles from abroad and put them on sale in one or 
 more shops or warehouses, even if large numbers were sold 
 in the country by this means. It is not even considered 
 sufficient to have a certain number of the patented articles 
 made and sold in Belgium, the same articles being imported 
 also from abroad and sold in Belgium. 
 
 The government may grant an extension of the term for 
 working a patent. Practically this seeming act of con- 
 descension is valueless ; for to obtain such an extension of 
 time the inventor is required to state in his petition the day 
 on which he should have his invention at work, in order to 
 comply with the law — i. e., one year from the date of its 
 having been worked in any other country ; which date it is 
 often extremely difficult to be proved against the patentee, 
 unless he himself gives it, as in the case under consideration. 
 The inventor's petition is then referred to the different Cham- 
 bers of Commerce, and they would not hesitate, in some 
 cases, to give their opinion unfavourably to the patentee, 
 should the invention be valuable, and likely to be of advan- 
 tage to their fellow-countrymen. 
 
 The courts may annul a patent if the invention should 
 have been worked commercially in the kingdom by a third 
 party before the demand of the patent. 
 
 The intentional omission of part of the inventor's secret, or 
 an erroneous specification given intentionally, also invalidates 
 a patent. 
 
 If the complete specification and exact drawings should 
 
428 FOREIGN LAW. 
 
 have been printed and published previously to the demand of 
 the Belgian patent, unless such publication should have been 
 prescribed by law. 
 
 A foreign patentee, though his foreign patent may be 
 several years old, may, should his invention not come under 
 any of the stipulations of Article 24, take out a valid Belgian 
 patent, and his Belgian patent will have priority over any 
 patents for the same invention taken out by others between 
 the date of his foreign patent and that of his Belgian patent 
 of importation. 
 
 Beazil. 
 
 THE law secures to a discoverer or inventor of a useful 
 industry the property and exclusive use of his dis- 
 covery or invention. 
 
 Whosoever improves an invention or discovery has, in 
 such improvement, the right of discoverer or inventor. 
 
 To the introducer of a foreign industry a premium will be 
 given in proportion to its utility and the difficulty of intro- 
 ducing it. 
 
 The right of a discoverer or inventor will be confirmed by 
 a patent, conceded gratuitously, on payment only of the 
 stamp and costs. 
 
 (1.) It must be shown in writing that the invention in 
 question is his own invention. 
 
 (2.) He must deposit in the public archives an exact 
 specification of the means and processes to be followed, with 
 plans, drawings, and models explanatory thereof, if possible, 
 to do so. 
 
 Patents will be granted according to the species of discovery 
 or invention for periods of from five to twenty years, a longer 
 term being concedable by law. 
 
 The proprietor of a patent can dispose of it by using it him- 
 self or ceding it. 
 
 In the event of two or more persons obtaining by similar 
 
BRAZIL. 429 
 
 processes a certain result, and applying simultaneously for a 
 patent, it shall be given to all. 
 
 The patent expires if it can be proved that the recipient has 
 committed any fraud, or has concealed anything in the decla- 
 ration. If any one can prove to the declared inventor that 
 the invention is his own. If the recipient does not put in 
 practice the invention two years after the concession. If the 
 discoverer obtains for the same invention a patent in a foreign 
 country. In this case, according to Article 3, he has a right 
 to a premium. If the article produced is found injurious to 
 the public or contrary to law. The right of patent ceases if the 
 recipients, before obtaining the concession, have made use of 
 such invention, patent, or discovery. 
 
 The applicant for letters patent addresses a petition to the 
 Crown, asking for a patent or privilege, and transmitting full 
 explanations or models according to law. This is referred by 
 the Minister of Agriculture to the Auxiliary Society of National 
 Industry. They report on the utility of the inventive process 
 or invention. It is then submitted to the law ofB.cers, who 
 endeavour to decide as to its originality and as to its non-in- 
 terference with anterior rights. Should it not be of a nature 
 also to require reference to the Sanitary Board, or other similar 
 technical authorities, it is then discussed and reported on by 
 the Council of State. 
 
 Should it not be necessary to refer it to the legislative body, 
 whose authority must be obtained to insure any remittance of 
 Customs dues for the articles proposed to be imported, or any 
 similar sacrifice of public resources or funds, it is then return- 
 ed to the Minister of Agriculture, and the privilege granted 
 or refused. 
 
 The actual legitimate official expenses involved by the 
 stamps, documents, &o., varies between £9 and £14, the patent 
 being granted gratuitously. 
 
430 FOREIGN LAW. 
 
 Deotlabk. 
 
 INYENTORS are protected by Royal letters patent granted 
 througli the Ministry of tte Interior, in accordance witli 
 rules prescribed by the traditional practice of tbat department. 
 Tte applicant must address tbe Ministry, accompanying his 
 demand by detailed specifications and drawings. These 
 papers are forwarded to the Polytechnic school to be reported 
 upon by the director, who states whether a patent should be 
 granted and what he thinks should be the term. The Ministry 
 always adopt the director's conclusion. The patents usually 
 run for three, four or five years. Important iaventions are 
 protected for ten years and in some cases for fifteen years. 
 
 Patents are never granted to foreigners for more than five 
 years. The fee charged at the Ministry is 17 dollars 
 (£1 17s. 6d.) The time occupied in the correspondence is 
 about two months. The patent is forfeited if it is shown that 
 a similar invention has been used iu Denmark before, or if 
 the patentee does not carry out his invention within the year 
 and continue to employ it. 
 
 Feance. 
 
 EVERT new discovery or invention in all departments of 
 industry confers upon its author, under the conditions 
 and for the time hereafter mentioned, the exclusive rights of 
 working for his own profit the said discovery or invention. 
 
 The following are considered as new inventions or dis- 
 coveries : 
 
 The invention of a new industrial product. 
 
 The invention of new means, or the new application of 
 known means, for obtaining an industrial result or product. 
 
 Pharmaceutical compositions or remedies of all kinds ; 
 being subject to certain special laws ; and schemes and com- 
 binations referring to credit and finances, cannot be patented. 
 
 The duration of patents is five, ten, or fifteen years. Every 
 
PRANCE. 431 
 
 patent is subject to th.e following tax : 600 francs for a patent 
 of five years, 1,000 for a patent of ten years, and 1,500 francs 
 for a patent of fifteen years. This tax has to be paid by yearly 
 instalments of 100 francs, under penalty of forfeiture if the 
 patentee allows one year to elapse without paying the tax. 
 The inventor must deposit under a sealed cover at the office 
 of the secretary of the Prefecture in the department in which 
 he resides, or in any other department on choosing a residence 
 there : 1st. His petition to the Minister of Agriculture and 
 Commerce, 2nd. A specification of the discovery, invention, 
 or application forming the subject of the petition. 3rd. The 
 drawings or specimens necessary for the comprehension of the 
 specification; and 4th. A memorandum of a document deposited. 
 The demand must be limited to a single principal object, with 
 the details that constitute it, and the application which shall 
 be indicated. It must mention the d.uration of the term re- 
 quired and must contain neither restrictions, conditions nor 
 reservations ; and must set forth a title containing a compen- 
 dious and precise designation of the object of the invention. 
 
 The specification must not be in a foreign language, and a 
 duplicate must be added to the petition. All docaments must 
 be signed by the applicant or his agent. 
 
 No deposit can be received except on the production of a 
 receipt proving the payment of a sum of 100 francs on account 
 of the tax of the patent. 
 
 The duration of the patent begins from the day of the deposit 
 being made. 
 
 The letters patent are delivered according to the order in 
 which the petitions are received, without previous examination, 
 at the applicant's own risk, and without guarantee as to either 
 the reality, novelty or merit of the invention, or the accuracy 
 or exactness of the specification. 
 
 The duration of patents can only be extended by a special 
 law. 
 
 The patentee or his assigns during the whole term of the 
 patent may make alterations, improvements or additions to the 
 invention ; by complying on deposit of the petition with the 
 
432 FOREIGN LAW. 
 
 formalities above described, a certificate is granted which 
 expires with the original patent. 
 
 Every application for a certificate of addition is subject to 
 a tax of 20 francs. 
 
 A patentee, who, for an alteration, improvement, or addition 
 wishes to take a principal patent of five, ten, or fifteen years, 
 instead of a certificate of addition expiring with the original 
 patent, must comply with the same formalities as on an original 
 patent and must pay the same tax. None but the patentee 
 or his assigns acting as above mentioned can during one year 
 legally obtain a patent for an alteration, improvement or ad- 
 dition to the invention which formed the subject of the patent ; 
 but any person who wishes to obtain a patent for an alteration, 
 addition or improvement on an existing patent may during 
 the year make an application which must be transmitted to 
 and remain under seal at the Ministry of Agriculture and 
 Commerce ; at the expiration of the year the seal will be 
 broken and the patent delivered. The patentee will however 
 have the preference for all alterations, improvements, and 
 additions for which he has demanded a certificate during the 
 year. 
 
 Whoever has taken a patent for a discovery, invention, or 
 application connected with the subject of another patent has 
 no right to work the invention already patented, and the 
 original patentee cannot work the invention which forms the 
 subject of the new patent. A patentee may transfer the whole 
 or part of the proprietorship of his patent, by a notarial deed, 
 and after the payment of so much of the tax then due. 
 
 No transfer is valid as regards a third party until registered. 
 The liceneees of a patent, and those who may have acquired 
 from the patentee or his assigns the power to work the dis- 
 covery or invention, have the full benefit of the certificates of 
 addition and vice versa. 
 
 All specifications, drawings, specimens and models of patents 
 remain, until the expiration of the term, deposited at the 
 Ministry of Agriculture and Commerce, where they may be 
 inspected free of charge by every applicant. 
 
HANOVER. 433 
 
 Foreigners may obtain patents in France on complying witli 
 the requisite formalities, and the author of an invention or 
 discovery already patented abroad may obtaia a patent, but the 
 duration of this patent must not exceed that of the patent 
 previously obtained abroad. 
 
 Patents become null and void, 1st. When the discovery, in- 
 vention or application is not new. 2nd. When not patent- 
 able. 3rd. Whenever they refer to theoretical or merely 
 scientific principles, methods, systems, discoveries, and con- 
 ceptions, the industrial application of which are not indicated. 
 4th. Whenever the discovery, invention, or application is 
 known to be contrary to public order or safety, to morals, or 
 to the existing laws of the country. 5th. Whenever the title 
 under which the patent has been demanded indicates fraudu- 
 lently another object than the real object of the invention. 
 6th. Whenever the specification accompanying the patent is 
 not sufficient for working the invention, or whenever it does 
 not completely or fairly point out the real means employed by 
 the inventor. Any discovery, invention, or application — to 
 which in France or abroad, and before the date of the deposit 
 of the petition, sufficient publicity has been given to enable 
 the same to be worked — ^will not be considered as new. 
 
 The patentee forfeits his rights, 1st. If he has not paid his 
 annuity before the beginning of each year of the term of his 
 patent. 2nd. If he has not worked his discovery or inven- 
 tion in France within the term of two years from the date of 
 the signature of his patent, or has ceased to work it during 
 two consecutive years, unless in one or the other case, he 
 justifies himself as to the causes of his inaction. 3rd. If he has 
 introduced into France objects manufactured abroad and 
 similar to those which are protected by his patent. 
 
 Hauovbb. 
 
 KT person making a new invention in industry, may be 
 
 invested for a certain time with the right of applying it 
 
 exclusively under certain conditions mentioned hereafter. 
 
 A 
 
 r J 
 
434 FOREIGN LAW. 
 
 A patent may also be delivered to any person importing an 
 invention from foreign countries, unless sucli invention be al- 
 ready known to the public, and a legalised copy of tke foreign 
 patent must be produced. 
 
 A patent may also be delivered to any person who shall 
 add an essential improvement to an invention already patented 
 in the kingdom. 
 
 Such a patent, however, will not be allowed to interfere 
 with the rights of the original inventor. 
 
 The petitioner for a patent must deliver a precise, correct, 
 and complete description of the object to be patented, together 
 with the required drawings or models, and if possible, a pattern 
 of the product, and the petition must set forth the peculiar 
 claims as to novelty. 
 
 The petition is to be addressed to the Minister of the Home 
 Department, who wiU submit the invention to an examination 
 of competent judges as to its novelty and peculiarity, and to 
 decide accordingly. 
 
 Foreigners will not be allowed to obtain patents except for 
 inventions intended to be carried out within the kingdom. 
 
 A patent wUl not be granted for a longer term than ten 
 years. 
 
 In the case of a patent being granted originally for a shorter 
 period, its duration may, if thought proper, be extended to 
 that term. Such a prolongation, however, must be published 
 at least one year before the expiration of the term originally 
 fixed.' 
 
 Patents of importation are not allowed to endure beyond 
 the term of the foreign patent. 
 
 The patent right must be limited to the object designated 
 by the characteristic features, as laid down in the specification. 
 
 A patent may be transferred or made over to others by 
 legacy. 
 
 The patent will be cancelled, if it can be shown that the 
 invention is not new ; and particularly if, at the time of the 
 granting of the patent, it had already been openly put into 
 practice, or had gained such publicity as to allow of its imita- 
 
ITALY. 435 
 
 tion ; or if it be shown that the invention has been wrongly 
 or incompletely described ; or if it be proved by some other 
 person that the invention was made or originally imported 
 by him, and that the patentee had illegally appropriated the 
 same. 
 
 Pinally, if the invention shall not, without sujfficient reason, 
 be put into practice in the kingdom within sis months from 
 the granting of the patent, or whenever the working of the 
 said invention has been interrupted during six months. 
 
 Italy. 
 
 LETTERS patent may be granted for new inventions or 
 discoveries in industry as (1) An industrial product or 
 result ; (2) An instrument, machine, tool, engine, or any me- 
 chanical apparatus ; (3) A process or mode of manufacture ; 
 (4) A motion or the application of any known power to indus- 
 trial purposes ; (5) The technical application of a scientific 
 principle provided immediate results in industry are obtained 
 thereby. In the latter case the patent is limited solely to 
 those results expressly pointed out by the inventor. 
 
 An invention or discovery in industry is considered as new 
 when not before known, or when even a general notion of it 
 existed without the particulars necessary for its adoption. 
 A patent may be granted for an invention patented abroad, 
 during the continuance of the foreign term and if not known 
 in the kingdom. 
 
 Modifications of inventions or discoveries in industry which 
 are already protected by letters patent, may be patented with- 
 out prejudice to the patent for the original invention. 
 
 Inventions or discoveries relating to trades which are con- 
 trary to law, morals, or public safety ; or not relating to the 
 manufacture of material objects ; or of a mere theoretical 
 nature ; and all kinds of medicine, may not be patented. 
 
 Letters patent do not guarantee the utility or reality of the 
 invention or discovery as claimed by the petitioner, nor do they 
 
436 FOEEIGN LAW. 
 
 prove the existence of those properties which, according to law, 
 an invention or discovery must possess in order to render the 
 patent valid. 
 
 Patentees or their assigns may obtain a certificate of addi- 
 tion for any modification made by them in their original dis- 
 covery or invention. The certificate extends the efiect of the 
 original patent to all such modifications from the date of ap- 
 plication, and for the whole duration of the latter. 
 
 Letters patent take effect with respect to third parties from 
 the date of application. 
 
 The duration of a patent can never exceed fifteen years, 
 nor be less than one year. 
 
 Patents granted for less than fifteen years may be pro- 
 longed for one or more years, so long as the whole term does 
 not exceed fifteen years. 
 
 All patents are subject to a proportional and annual tax ; 
 the proportional tax consists of a sum of as many ten lire as 
 there are years in the duration of the patent ; the annual tax 
 is 40 lire for the first 8 years, 66 lire for the subsequent 3 
 years, 90 lire for the 7th, 8th, and 9th years, 115 lire for the 
 IDth, 11th, and 12th years, and 140 lire for the remaining 3 
 years. 
 
 The first annuity and the proportional tax must be paid 
 previous to the application for a patent. The other annuities 
 must be paid in advance, i. e. on the first day of each year of 
 the duration of the patent, and are also subject to the triennial 
 increase, even in the case of a prolongation of the patent. 
 
 The delivery of a certificate of addition is subject only to 
 the payment in advance of 20 lire. 
 
 Certificates of prolongation are subject to the payment of 
 40 lire, besides the proportional tax and annuities ; the an- 
 nuity corresponding to the first year of the prolongation must 
 be paid at the time of application, and the subsequent annui- 
 ties in advance. 
 
 An application for letters patent must be made to the Mini- 
 ster of Agriculture, Industry and Commerce, and must contain 
 (1) the name and surname, birthplace and residence of the 
 
ITALY. 437 
 
 inventor, or his representative ; (2) the title of the invention, 
 describing its precise features and object ; (3) a statement of 
 the duration of the term required. 
 
 One certificate only will be granted for an application, and 
 one certificate only for a single invention. The application 
 must be accompanied by a specification, — which must be in 
 Italian or French, — drawings (if necessary), and the receipt 
 for the tax. In cases of patents for importation, the original 
 foreign patent, or a certified copy, and a power of attorney, 
 must be sent ; and in all cases a memorandum of documents 
 and objects delivered is required. 
 
 During the first six months of the duration of a patent, any 
 portion of it may be disclaimed on the payment of 40 lire. 
 
 Patents will be refused if there is no written application, 
 or if in the application made the title of the invention or dis- 
 covery has not been mentioned ; if the specification is absent ; 
 if a single patent is demanded for different inventions or dis- 
 coveries ; or if several patents of the same nature or of difier- 
 ent kinds are demanded in the same application ; or if the 
 fees do not correspond with the kind of patent asked for. 
 
 Assignments of patents must be registered, and are not valid 
 with respect to other parties before the date of registration. 
 
 Patents cease to be valid (1) in cases of non-payment, even 
 in a single instance of the annual tax within three months 
 from the date of their expiration ; (2) whenever an invention or 
 discovery, patented for not more than five years, has not been 
 worked within the first year of the grant of the patent, or 
 whenever the patentee shall have discontinued working it 
 during a whole year; (3) whenever a patent granted for 
 more than five years has not been worked before the expira- 
 tion of the second year, or whenever its working has been dis- 
 continued for two years. The patentee does not in any of 
 these cases forfeit his rights, if the inaction is attributable to 
 causes beyond his control. The want of pecuniary means is 
 not included in these causes. 
 
438 FOBEIGN LAW. 
 
 Mexico. 
 
 INVENTORS must deliver to the Government, or to the 
 magistrate of the place where they wish to execute their 
 project, or to the magistrate of their residence, or to the 
 governor of the state or territory to which that place belongs, 
 the precise description, together with the drawings, models, 
 and all they think to be required for explaining the object in 
 view, all signed by their own hand, when the authorities will 
 deliver to them a certificate. The patent is granted by the 
 Governor. 
 
 In case the application has not been made directly to the 
 government of the state, the local authorities are to forward 
 such application, with all the documents, to the Governor, 
 who, after making an entry of the same, is to forward them by 
 the earliest mail to the Minister of the Interior, in case appli- 
 cants should not do so by themselves. 
 
 In granting a patent, the Government does not examine 
 the inventions or improvements as to their utility, but merely 
 as to whether they are contrary to public safety, morality, 
 laws, or regulations ; and if not, the grant of protection can- 
 not be refused to applicants. 
 
 Patents for inventions remain in vigour during ten years, 
 and those for improvements during six years, to begin from 
 the date of working the patent at any place of the republic. 
 
 Inventions or improvements are supposed to be worked 
 from the day on which the patent has been delivered. 
 
 If inventors, or those who improve inventions, should wish 
 to have their privilege limited to one state only, the patent is 
 to be granted by the authorities of the said state. 
 
 Parties obtaining a patent for an invention or an improve- 
 ment which has already been worked without a patent by 
 another party, forfeit their privilege, although they declare 
 to be the owners of the invention or improvement. 
 
 If the invention or improvement is of such a nature as to 
 admit of its being kept secret, and if a patent has been ob- 
 
POLAND. 439 
 
 tained for the same, the invention or improvement must be 
 thrown open to the public at the expiration of the term. 
 
 Patents of improvements wiU. remain inherent to those of 
 the original invention, ■without prejudice to the arrangement 
 both parties may come to. 
 
 If iuventors, or those who improve inventions, should wish 
 to have their privilege extended, they must apply to the Go- 
 vernment, which is to make a report on purpose to the con- 
 gress. 
 
 The patent fees vary between 10 and 300 dollars (pesos). 
 
 Importers of any branch of industry may obtain patents. 
 
 Poland. 
 
 PATENTS for all kinds of inventions, discoveries, or im- 
 provements, as well as for importations, are granted in 
 the kingdom of Poland. 
 
 Patents for inventions, discoveries, or improvements are 
 granted for three, five, or ten years. Patents for importations 
 can only be granted for the term obtained abroad. 
 
 Patents of invention are delivered on a mere application 
 without previous examination, and consequently do not gua- 
 rantee the merit, priority, or quality of the invention. 
 
 The right of working and manufacturing the patent article 
 belongs, during the whole term of the patent, to the patentee 
 or his assigns, except in the cases hereafter mentioned. How- 
 ever, if during that time other parties should take out a 
 patent for an improvement in any part of the same invention, 
 they acquire thereby the right of manufacturing that part 
 only. 
 
 The taxes on patents are — 
 
 150 florins for 3 years. 
 260 „ 5 „ 
 
 500 „ 10 „ 
 and must be paid in advance. 
 
 AH applications for patents must be made to the authorities 
 
440 FOREIGN LAW. 
 
 of tlie respective Governments, and at "Warsaw to the Muni- 
 cipal Board, by fulfilling tte following formalities : — 
 
 1. A declaration as to wtetBer the article about to be 
 patented is an original invention or an importation. 
 
 2. A complete specification (for the Board of Home Affairs 
 and Public Instruction) of the principles, means, and pro- 
 cesses that constitute the invention or improvement, as well 
 as the required plans, sections, drawings, and models. 
 
 3. The specification must be clear and precise, so as to 
 enable all manufacturers to use the invention at the expira- 
 tion of the patent. 
 
 4. In cases of importations of inventions patented abroad, 
 applicants must at the same time prove the article to be 
 reaUy patented abroad, and the foreign patent not to have 
 expired. 
 
 6. Moreover, they must say whether they wish the descrip- 
 tion to be published in full, by extracts, or not at all. 
 
 Whenever patentees desire to transfer their patents entirely 
 or partially to others, they, together with the assignees, must 
 send an extract of the authentic act of transfer to the Board 
 of Home Affairs and Public Instruction, to have it inserted in 
 the public Register of Patents. 
 
 Patents for inventions that might be injurious to society, 
 that relate to the common wants of life, or for objects that 
 have alteady been manufactured in the country, will not be 
 granted. 
 
 Patents are annulled — 
 
 1. (a) If inventors have not delivered an exact description, 
 and indicated with clearness and precision the means of 
 manufacturing the invention, discovery, or improvement ; 
 and if it is proved that it would be impossible to attain 
 the object of the invention by following the published 
 description and the information given by the inventor. 
 
 (6) If during the term mentioned in their letters patent 
 inventors have not worked their invention, or if they 
 cannot show good cause for such inaction. 
 
 2. By a judgment of decree of tribunals : — 
 
PORTUGAL. 441 
 
 (c) Whenever it is proved that the invention does not pro- 
 perly belong to the patentee ; and also whenever it is 
 proved that the same invention, discovery, or improve- 
 ment has been known and published before the patent 
 was applied for. 
 
 Portugal. 
 
 PATENTS are granted for a term of years not exceeding 
 fifteen to thg inventor or discoverer, to enjoy during 
 that time the right of property. 
 
 From the right of property to an invention is derived the 
 exclusive right of producing or manufacturing the articles 
 which constitute the said invention. Persons making addi- 
 tions to their inventions enjoy the advantage of the additional 
 improvements, and they may apply for a French patent. 
 
 The publication of patents, their drawings, models, and 
 specifications, which are required for obtaining the concession, 
 must be shown gratuitously to every one who desires to see 
 them. Applicants, by payment, can procure copies. On the 
 Government devolves the duty to announce officially what 
 patents have fallen into the dominion of the public. 
 
 The right of property conferred by a patent is transmissible 
 by will to heirs and successors. 
 
 A register of all patents is kept in the Department of 
 Public Works. 
 
 A tax of 120,000 reis is exacted on granting a patent for 
 fifteen years, equivalent to about £26 sterling ; of this amount 
 75,000 reis, or £18 12s., is set apart for a fund for the ad- 
 vancement of industry ; the remaining sum is absorbed in 
 stamps and fees paid to Government. 
 
 Medicines, articles of food, simple changes in the form of 
 an object patented, and ornaments are excluded from obtain- 
 ing patents. 
 
 The civil governor of the district is charged with the duty 
 of granting patents, on whom devolves the duty also of for- 
 
442 FOREIGN LAW. 
 
 warding to the Office of Public Works information for their 
 due registration. 
 
 An invention which involves danger to public safety is 
 prohibited from obtaining a patent. 
 
 A foreigner can only obtain a patent subject to the rules 
 laid down by the CivU Code of Portugal, and that also only 
 for the period of time before it falls under the domiuion of 
 the public, in conformity with these rules. 
 
 No concession of patent for an improvement of an article 
 already patented is granted, except to the patentee himself, 
 during the first year after the patent is granted ; application 
 by another person may be made before the expiration of the 
 year to the proper department, where such application wUl be 
 taken into consideration. 
 
 This provision is to ensure to the first applicant the prefer- 
 ence over other persons, with the exception of the original 
 patentee, who always has the preference accorded to him, 
 provided his application is also made during the first year. 
 
 Prussia. 
 
 PATENTS can be obtained both for discoveries and for 
 improvements, and also for the introduction into Prussia 
 of inventions patented abroad. 
 
 New goods, new machines, new tools, and new modes of 
 fabrication can be patented, but only on the condition that 
 they are useful to industry and manufacture, and afford new 
 means of industrial development. 
 
 Articles of iavention patented abroad may also be patented 
 in Prussia, provided, however, that no description of them 
 shall have been published either here or elsewhere, and that 
 no use shall have yet been made of the invention in Prussia. 
 
 When once the details of an invention have been published, 
 either in Germany or elsewhere, officially or unofficially, 
 before the application for the Prussian patent has been made 
 in Berlin, it is invariably refused. 
 
PRUSSIA. 443 
 
 An article wHch is patented abroad may, if it fulfils the 
 necessary requirements, be patented in Prussia by" anybody. 
 No rights whatever are reserved to the original patentee, 
 except in the case of patents taken out in other German 
 countries. 
 
 Under the agreement concluded between the Zollverein 
 States in 1842, when a patent has been given for an invention 
 in any one of those States, it secures to the patentee the sole 
 right of applying for a patent for the same article ia all the 
 other States of the Confederation, but it does not necessarily 
 follow from this that the Prussian authorities will give 
 patents in every case where other German Governments have 
 done so. 
 
 In Saxony, Bavaria and Wiirtemberg, for instance, patents 
 are much more easily obtained than they are in Prussia. 
 
 Patents are granted only to natives, or to the subjects of 
 such countries as by treaty are entitled to most-favoured- 
 nation treatment. 
 
 The application for a patent is made direct to the Minister 
 of Commerce in Berlin, and must be accompanied by full 
 descriptions, and, if necessary, also by models. These are, how- 
 ever, kept secret from everybody except from the persons 
 whose special duty it is to examine and report upon them. 
 
 The applications are registered immediately on receipt at 
 the Ministry, and take their precedence accordingly. 
 
 Under the Ministry of Commerce is a special department 
 called the Technical Deputation for Industrial Matters, to 
 whom all these applications are referred. It is their duty to 
 examine the models, descriptions, &c., to see whether patents 
 for similar or kindred iuventions have been already given, 
 and to ask for any further explanations which they may 
 require. They then decide absolutely and without appeal 
 whether they will grant the patent or not. They fix the 
 length of time for which the patent is to hold good, and have 
 moreover the right of declariag whether they will give a 
 patent fpr the whole invention or only for some portion 
 of it. 
 
444 FOEEIGN LAW. 
 
 Their verdict is communicated to tte person wlio has 
 applied for the patent, and he is allowed a period of six weeks 
 to decide whether he accepts or not the conditions proposed 
 by the deputation. 
 
 If he agrees to accept them, the patent is then issued under 
 the signature of the Minister of Commerce. 
 
 The following conditions are invariably imposed in the case 
 of every patent which is granted : — 
 
 1. The patentee must give practical effect to his invention 
 in Prussia within the time fixed by the Minister (usually six 
 months, never more than a year), on pain of forfeiting his 
 patent, and he must produce before the end of that term an 
 official certificate from the local police, or at least from some 
 Government employe, that his invention is, or has been, 
 actually at work within the Prussian dominions. 
 
 2. If at any time during the period for which the patent is 
 granted, his invention shall have been unemployed during 
 twelve consecutive months, the patentee shall forfeit all his 
 rights. 
 
 3. The patent shall equally be forfeited if, at any time 
 afterwards, it can be proved that the invention was neither 
 new nor original. 
 
 The period for which a patent is to run is laid down, spe- 
 cially for each case, in the rescript of the Minister of Com- 
 merce. The law is that it shall not be less than six months, 
 nor more than fifteen years ; but it is now usually fixed at 
 three years. 
 
 A patent which is near expiring may in some cases be 
 renewed, but the entire period for which it can last must 
 never exceed fifteen years. Such prolongations, however, 
 have lately been more difficult to obtain than they were 
 formerly. 
 
 Unless in cases where the applicant himself demands a 
 special exception, patents extend to the whole kingdom of 
 Prussia. 
 
 The expenses of taking out a patent in Prussia are almost 
 nominal. 
 
RUSSIA. 445 
 
 The application for a patent must be written on stamped 
 paper of 5 sgr. (6d.) The answer of the Technical Deputation 
 is given on stamped paper'of 15 sgr. (Is. 6d.), and the patent 
 itself, if granted, is liable to a stamp duty of 1 th. (3s.) There 
 is no further tax or duty whatever. 
 
 A patent in Prussia gives to the patentee the exclusive 
 right of working his invention, that is to say, the sole right 
 of making the article in question ; and also, in the case of 
 machinery, the sole right of employing it when made. It 
 does not give the right of prohibitiag the sale or importation 
 of articles which are like the article for which the patent has 
 been obtained. 
 
 EussiA. 
 
 PATENTS may be obtaiaed for all kinds of discoveries, 
 inventions, and improvements of general utility or a 
 process of carrying on any art, trade, and manufacture. 
 
 Patents are granted without being guaranteed by the 
 Government. 
 
 The law admits of patents for inventions that are privileged 
 abroad. 
 
 Patents for inventions that are already known, but not 
 privileged abroad, are granted only in case of exclusive utility, 
 taking into consideration the expenses required for intro- 
 ducing them. 
 
 By the 152nd article of the Russian Code of Laws, vol. xi., 
 relating to manufacturing industry, persons obtaining patents 
 are bound to bring the patented inventions, &c. into operation in 
 Eius sia before the expiration of the fourth par t of the time granted 
 by the patent, and a notification of the fact of the invention 
 being carried out must be made to the Department of Interior 
 Trade and Manufactures in the course of the six months fol- 
 lowing, and the exact locality stated where the invention is 
 being carried out, otherwise the patent becomes public pro- 
 perty. The declaration of the carrying out of the invention 
 must be certified by the proper local administration. 
 
446 FOEEIGN LAW. 
 
 Tte Department of Trade and Manufactures, on receipt of 
 an application for a patent, accompanied by documents, de- 
 livers at once to the applicant a certificate of acknowledgment 
 for such, documents. 
 
 In cases in which a patent is not granted, the applicant is 
 reimbursed the amount of the tax fixed for the patent, less 
 the charges incurred on account of stamps, postage, and 
 advertisements in the public newspapers. 
 
 Any patentee who may change his own invention by 
 makiug an improvement in it, may take out another patent 
 for such alteration by paying a new tax ; but in every case a 
 notification, together with a special description of the improve- 
 ment must be made to the proper Department on the sub- 
 ject. 
 
 Any person making an improvement on an invention 
 already patented can only obtain a special patent for such 
 improvement after having come to terms with the holder 
 of the original patent. 
 
 Formalities, — The petitioner must present to the Depart- 
 ment of Interior Trade and Manufactures : — 
 
 (1) A petition stating the time for which the patent is 
 desired, and the subject to which the invention refers. If 
 the invention has been patented abroad, the date on which 
 a patent was granted for it must be stated, as well as the 
 number of years for which it has been granted, or for which 
 a prolongation of it is intended ; it must likewise be stated 
 whether the patent has been granted in a coujitry in which 
 the payment of the tax is made annually, as is the case, for 
 instance, in Belgium. 
 
 (2) An exact description of the object for which the peti- 
 tioner wishes to obtain the privilege or patent, specifying all 
 the principal details, advantages, and the way of employing 
 it, with the plans and drawings respecting it. If, for a clearer 
 explanation, it should be necessary to add to the description a 
 model, the petitioner is bound to forward it. 
 
 A translation of the description must be furnished in the 
 Russian language. 
 
RUSSIA. 
 
 447 
 
 (3) A receipt certifying the payment of the duties, ac- 
 cording to a fixed rate. 
 
 Dv/ration. — The duration of a patent is reckoned from the 
 day on which the patent is signed. 
 
 Patents for iuventions belonging to the applicant are 
 granted for three, five, or ten years — the longest term. 
 
 Patents for the introduction of foreign inventions cannot 
 exceed the term of the privilege granted abroad to the in- 
 ventor ; at all events, cannot exceed six years, unless the 
 petitioner be the inventor himself, in which case he may 
 obtain a patent for a term of ten years. 
 
 Tom. — The duties for discoveries, iuventions, and improve- 
 ments belonging to the applicant for the patent are : — 
 For 3 years . . . .90 roubles = £12. 
 
 „ 5 „ . . . .160 „ 20. 
 
 „ 10 „ . . . . 450 „ 60. 
 
 For the introduction of foreign inventions : — 
 
 For 1 year . . . .60 roubles = £8. 
 
 „ 2 years . . . . 120 „ 16. 
 
 „ 3 „ . . . .180 „ 24. 
 
 „ 4 „ . . . .240 „ 32. 
 
 „ 6 „ . . . .300 „ 40. 
 
 „ 6 „ . . . .360 „ 48. 
 
 Trwnsfer of Patents. — The patentee may transfer the patent 
 to another person, wholly or partly, or be in partnership with 
 some one else ; but the law prohibits either to cede it to any 
 company of shareholders, or be in partnership with it, without 
 being specially authorised by the Government. 
 
 Loss of Bight. — The causes of forfeiture are : — ■ 
 
 (1) If the invention has not been fully carried out before 
 the expiration of the fourth part of the time granted by the 
 patent. 
 
 (2) The want of novelty. 
 
 (3) Proof that the patentee falsely gave out the invention 
 or discovery for his own, and if the real inventor claims it. 
 
 (4) The deficiency of the specification, or a dissimulation 
 
448 FOREIGN LAW. 
 
 of tte essential parts, indispensable for procuring the declared 
 result. 
 
 (The expiration of patents is published in the newspapers.) 
 Infringement. — The patentee has a right to prosecute 
 counterfeiters, and to claim damages in respect of the infringe- 
 ment of the patent. 
 
 Spain. 
 
 LETTERS patent for original inventions are delivered 
 for five, ten, or fifteen years, at the option of the in- 
 ventor. Letters patent for inventions imported from abroad 
 (patents of importation) are only granted for five years, and 
 available only for the working of the invention within the 
 kingdom ; such patentees therefore cannot import their patent 
 article from abroad ready made, unless by submitting to the 
 common duties on foreign articles. 
 
 Patents granted for five years may be extended to five years 
 more, if there exist good reason for so doing ; those granted 
 for ten or fifteen years cannot be prolonged. 
 
 Patents of invention may be taken for objects which have 
 not been worked iu Spain or foreign countries, and objects 
 worked abroad but not in Spain are patentable as importa- 
 tions. However, those objects of which models or descrip- 
 tions in the Spanish language exist at the Royal Conservatory 
 of Arts, canjiot be patented unless three years have elapsed 
 since their importation without their being put into practice, 
 in which case letters patent of importation for five years only 
 can be granted. 
 
 Royal letters patent may be solicited by the applicants 
 themselves, or their attorney, by means of a memorial, ad- 
 dressed to the governor of the province where they reside, or 
 at Madrid, if convenient. 
 
 The memorial must be accompanied with, — 
 
 1. A petition on stamped paper, mentioning the object of 
 the patent, whether an original or imported invention, and its 
 duration according. Each application must not contain more 
 than one object. 
 
SPAIN. 449 
 
 2. A plan or model, with the description and explanation 
 of the object concerning the mechanism or process represented 
 as not being nsed at that time, all with the greatest correct- 
 ness and clearness, so that there never could arise any donbt 
 about the object or its particular nature, which applicants 
 represent as not having been worked in that form, since the 
 patent bears on that point only. 
 
 Models must be delivered in a closed and sealed case, and 
 plans, descriptions, and explanations, in a sealed cover. 
 
 At the delivery of letters patent a proper receipt of the pre- 
 payment of the following taxes to the Conservatory of Arts 
 must be produced, viz. : — 
 
 For a privilege of 5 years '. . . 1000 reis. 
 
 Do. 10 „ \ . . 3000 „ 
 
 Do. 15 „ . . . 6000 „ 
 
 For a privilege of importation of five years 3000 „ 
 
 Besides, 80 reis are to be paid for the delivery of the letters 
 patent themselves. 
 
 Patents may be transferred, presented, sold, exchanged, 
 and bequeathed by last will, like any common private pro- 
 perty. 
 
 All transfers must be made in writing, and express whether 
 the patent is transferred for the whole kingdom or for one or 
 more provinces, or for certain places only ; moreover, whether 
 the renunciation is made absolutely or with certain reserves, 
 whether it was made with the right of transferring the patent 
 to others or no, and whether the owner prefers to see it 
 transferred to one or more persons. 
 
 Assignees shall be bound to produce the written assign- 
 ment before the Governor where the application for the patent 
 was made, and the latter, after taking cognizance thereof, shall 
 deliver it to the Council of the Exchequer, who shall inform 
 thereof the Director of the Conservatory of Arts for his 
 registering the same, according to Art. 14. Assignments 
 not presented within thirty days of their date are null and 
 
 void. 
 
 The duration of a patent commences from its date. 
 
 G G 
 
450 FOREIGN LAW. 
 
 Patents become null and void in the following eases : — 
 
 1. At tke expiration of the legal term. 
 
 2. If patentees do not apply for their patents within three 
 months of their first application. 
 
 3. If patentees have not put their inventions into practice 
 themselves or by others within one year and one day. 
 
 4. If patentees give up their invention by interrupting 
 their works during one year and one day. 
 
 5. If the invention is proved to be worked already some- 
 where in the kingdom, or published in a book or by prints, 
 
 models, plans, or descriptions existing at the Royal Conser- 
 vatory of Arts, or if it is worked in another country whilst it 
 is represented by the patentee as new and original. 
 
 United States of America. 
 
 PATENTS may be granted for any new and useful art, 
 machine, manufacture, or composition of matter, or any 
 new and useful improvement on any art, machine, manufac- 
 ture, or composition of matter not known or used before the 
 application. 
 
 The inventor must make an application in writing to 
 the Commissioners of Patents. The form is not material, 
 provided it sets forth the facts to which the applicant is 
 required to make oath, which are that he verily believes him- 
 self to be the original and first inventor, that he does not 
 'know or believe that the same was ever before known or 
 used, and also of what country he is a citizen. 
 
 The taxes are as follows : — On the application for a patent, 
 16 dollars ; on the issue, 20 dollars. The inventor may 
 disclaim any portion of the invention that is not new. Any 
 addition or improvement requires a new patent. If the 
 specification is defective or insufficient, the patent may be 
 surrendered, and re-issued for the residue of the term. 
 
 All patents are granted for seventeen years, and no exten- 
 sion is allowed. The term of a patent which has been 
 
WURTEMBEEG. 451 
 
 patented abroad expires with the term of the foreign 
 patent. 
 
 Letters patent are void if the patentee claims what he 
 knows to be useless, or if he withholds any part of his know- 
 ledge from the public, or if there has been any previous use of 
 the invention. 
 
 Drawings and written references, where the nature of the 
 case admits of drawings, must accompany the specification, 
 which must be in such full, clear and exact terms, avoiding 
 unnecessary prolixity, as to enable any person skilled ia the 
 art or science to which it appertains to make, construct, com- 
 pound and use the same. The part, improvement, or com- 
 bination which the patentee claims as his own invention must 
 be particularly specified and pointed out. 
 
 Every pateiit is assignable, either as to the whole interest 
 or any undivided part thereof. The assignment, and also 
 every grant and conveyance of the exclusive right, under any 
 patent, to make and use, and to grant to others to make and 
 use the thuig patented, must be recorded in the Patent OflS.ce 
 within three months of the execution thereof. 
 
 All applications for patents must be completed and pre- 
 pared for examination within two years after the filing of the 
 petition, and in. default thereof will be regarded as abandoned. 
 
 WUETEMBBEG. 
 
 PATENTS in Wiirtemberg are divided into patents for 
 invention and patents for introduction. The latter, 
 however, have reference solely to foreign patents introduced 
 into Wiirtemberg. A patent for invention taken out in the 
 kingdom includes and carries with it a patent also for intro- 
 duction. All that is necessary to obtain the latter in the case 
 of a foreigner or native is the production of a certified copy 
 of the foreign patent, together with the written consent of the 
 patentee to its introduction. Every petition for a patent, 
 accompanied by a specification in writing, sealed or open, as 
 
452 FOEEIGN LAW. 
 
 the applicant may prefer, must be delivered at the district 
 Government Office of the locality where the petitioner resides, 
 and is immediately forwarded to the Central Board of Trade 
 and Commerce at Stuttgart, which is a Department of the 
 Ministry of the Interior. The petition is then referred for 
 examination to a Commission ad hoc, whose business it is to 
 examine the specification, and report whether it is " useful 
 and new." 
 
 No patent can be granted for a longer term than ten years, 
 but the average period of grants is for five, or even less. The 
 patentee, however, can always obtain an extension of the term 
 up to ten years. No fees are payable for the mere grant of a 
 patent, but the patentee has to pay an annual tax, ranging 
 from 5fl, (8s. 6d.) to 20 fl. (£1 13s. 4d.), until the patent 
 expires or is void. A foreigner patenting an invention in 
 Wiirtemberg is obliged to find some native of the country to 
 stand security for the annual payment of the patent-tax. 
 
 An annual tax of from 5 to 20 florins is payable for a patent 
 during the period for which it is in force ; the first payment 
 is to be made when the patent is issued, and it is to be 
 repeated at the commencement of each year of the period. 
 When a patent ceases to be valid before the expiration of the 
 term for which it was granted, the patentee is released from 
 the payment of the tax for the year which has not yet 
 fallen due. 
 
 Foreigners applying for patents must furnish the authority 
 to which they deliver their application with a reference to 
 some native of Wiirtemberg, who will be responsible for the 
 payment of the patent-tax. 
 
 A patentee who has concealed or who has incorrectly de- 
 scribed an essential part of his invention, with a view to 
 keeping his process a secret, after the lapse of the term for 
 which the patent was granted, renders himself liable to the 
 penalty for fraud; and if the process in question was injurious 
 to the public, to the additional penalty incurred thereby. 
 
ZOLLVEREIN. 453 
 
 ZOLLVEEBIN. 
 
 EVERT State belonging to the Zollverein possesses the 
 power of granting, by letters patent, a privilege con- 
 veying to an individual or individuals specified therein the 
 sole right to make, use, or dispose of some new inventions or 
 discovery for a certain fixed period. 
 
 This power, however, has been limited and defined by 
 certain regulations agreed upon at Stuttgart in 1841, between 
 the Zollverein States. The object having been, on the one 
 hand, to remove as far as possible all obstacles to the freedom 
 of trade within the Zollverein States arisiag from patents or 
 privileges, and, on the other, to establish uniformity in all 
 essential points. 
 
 Patents may be granted for those things only which are 
 really novel and peculiar. A patent, consequently, cannot be 
 granted for inventions which have been already practised, 
 have been vendible, or in any way known within the Zoll- 
 verein previous to the grant of the patent ; especially inven- 
 tions already described in native or foreign works, by drawings 
 or otherwise, in such a way that they can be practised by any 
 competent person. 
 
 Each Government is to be the judge whether any invention, 
 for which a patent is demanded, is really novel or peculiar. 
 
 No patent shall be granted in one Zollverein State for an 
 invention by a German subject who has obtained a patent for 
 the same in another German State, except to the inventor 
 himself or his legal successor. 
 
 A patent may nevertheless be granted for an improvement 
 to an old invention, if the improvement constitutes something 
 novel and peculiar ; but the patent must be confined to the 
 addition or improvement, and not injure the patent granted 
 for the original thing. 
 
 The grant of a patent does not establish the right to pro- 
 hibit or limit the importation of such articles as have to do 
 with those for which a patent has been granted, nor the sale 
 and disposal in trade of such articles, nor can the holder claim 
 
454 POEEIGN LAW. 
 
 in virtue of his patent the right to prohibit the use or con- 
 sumption of articles of the above kind not procured by him, 
 or obtained elsewhere with his consent, machines and imple- 
 ments for manufacture and industry being alone excepted, 
 these not being general articles of commerce destined for con- 
 sumption by the public at large. 
 
 On the other hand, every ZoUverein Government in grant- 
 ing a patent may secure to the holder within their territory 
 the right of the exclusive manufacture or practise of the 
 iavention in question, or the right to introduce — 
 
 (a) A new process or method of manufacture ; or, 
 
 (6) To apply exclusively new machines or implements for 
 manufacture, so that he is entitled to prohibit the use of the 
 method, or the use of the machines or implements by all those 
 who have not acquired the right to do so from him, or pro- 
 cured the said machines or implements from him. 
 
 In every State of the Union the subjects of other States of 
 the Union are treated on an equality with their own subjects, 
 both in respect to grants of patents and protection in the 
 enjoyment of the privileges acquired by the patent. 
 
 The grant of a patent, however, in one State will never be 
 held as a valid reason for the non-refusal of a patent for the 
 same thing in other States. On the contrary, every State 
 withiu the limits agreed upon is the judge whether a patent 
 ought to be granted or not, without reference to what may 
 have taken place in the matter in any other Zollverein State. 
 
 Further, the grant of a patent does not convey in itself to 
 the subject of another State the right of independent settle- 
 ment, or of carrying on the trade or business iu which the 
 article for which a patent has been granted is used ; on the 
 contrary, such right must be specially acquired according to 
 the provisions of the constitution of each State. 
 
 A patent becomes void if the invention eventually proves to 
 be neither novel or peculiar. 
 
 A patent granted for an invention previously known to 
 certain individuals, but kept secret by them, remains in force, 
 unless rendered void by other causes, except as regards those 
 individuals. 
 
ZOLLVEREIN. 455 
 
 When a patent is granted, the invention must be specified, 
 with, the name and domicile of the holder, the period of 
 duration, and must also be notified in the OflScial Gazette. 
 
 Similarly, the prolongation of withdrawal of a patent before 
 the termination of the originally fixed period must be publicly 
 made known. 
 
 Persons applying for letters patent must send in a petition 
 in writing to the Board of Trade. The petition must contain 
 accurately and fully the following particulars : — 
 
 (1) Christian and surname, profession, domicile, and pre- 
 sent residence of the applicant. 
 
 (2) Declaration and distinct statement of the nature of the 
 invention. 
 
 (3) The distinct statement of the grounds of the petition 
 for an exclusive right — 
 
 (a) To manufacture or introduce a new article ; or, 
 (&) To apply new instruments for manufacture (machines 
 or implements) ; or, 
 
 (c) To apply a new method of manufacture. 
 
 (4) The number of years for which the patent is demanded. 
 This petition must be accompanied by an accurate description 
 of the articles for which the patent is demanded, with draw- 
 ings, models and patterns necessary for the elucidation of the 
 same. 
 
 This description may be sent in with the petition, either 
 open or sealed up. 
 
 If the patent is not demanded by the inventor himself, a 
 power must be obtained from him in duly legalized form. 
 
 When the petition is for the privilege of introducing an 
 article similar in kind to one already known, and for which a 
 patent has already been obtained in a foreign country, such 
 patent must be annexed in original or legalised copy. 
 
 Foreigners must send in a declaration in the form of a 
 regular deed drawn up by a solvent Baden subject, resident 
 in the Grand Duchy, by which the latter renders himself 
 responsible for the payment of the costs, taxes and fees, and 
 also for the transmission to the applicant of the ministerial 
 decision. 
 
456 COLONIAL LAW. 
 
 By a Law of 29th July, 1864, respecting stamps, fees and 
 taxes, in matters connected with the Civil and Police Ad- 
 ministration, the stamp charged on petitions is fixed at 15 kr. 
 (abont bd.), and the tax on letters patent from 15 to 500 fl. 
 (£1 5s. to £42.) 
 
 Besides this, the cost of the examination of the petitions for 
 patents mnst be reimbursed to the Treasury, generally 6 fl. 
 (10s.) a day for the time spent by a technologist. 
 
 The holder of a patent can transfer the right which he 
 acquires by the patent to others for the period of its 
 duration, or admit others to participate in the enjoyment 
 of the same. 
 
 On the death of a holder of a patent before its expiration, 
 the right passes to his heirs. 
 
 Notice must be given to the Board of Trade on every change 
 of possession taking place, and this must be inserted in the 
 Government Gazette. 
 
 A petition for the prolongation of a patent granted for less 
 than fifteen years must be sent into the Board of Trade some 
 months before its expiration. A decision is then passed after 
 due investigation. 
 
 When granted, the applicant obtains a fresh Act, and 
 notice is given in the Government Gazette. 
 
 The same taxes and fees have to be paid as before. 
 
 COLONIAL LAW. 
 
 British Guiana. 
 
 THE Law relating to the grant of patents in British 
 Guiana is very similar to the English law. The appli- 
 cation for a patent is made to the governor, and must be ac- 
 companied by an affidavit and provisional specification. 
 
 In the event of any inventor being resident out of the colony, 
 the petition, affidavit, and provisional specification may be 
 lodged by any person acting as his agent in the colony, pro- 
 
CANADA. 457 
 
 vided that the petition and affidavit of snch inventor (or his 
 declaration in places where a declaration is allowed by law 
 instead of an oath) be certified. The complete specification 
 may be deposited in the same manner. 
 
 Applications are referred to the Attorney General for exami- 
 nation and report. 
 
 The complete specification protects the invention for twelve 
 months. The sum of 100 dollars stamp duty must be paid 
 at the expiration of seven years. 
 
 The provisions as to disclaimers and extension are similar 
 those in force in this country. 
 
 Canada. 
 
 ANT person beiag a subject of Her Majesty and residing 
 in the province having discovered or invented any new 
 and useful art, machine, manufacture or composition of 
 matter, or any new and useful improvement or any art, 
 machine, manufacture or composition of matter, the same 
 not being known or used in the province by others before his 
 discovery or invention, and not being at the time of his 
 application in public use or on sale in the province with his 
 consent or allowance as the inventor or discoverer thereof, 
 and desiring to obtain an exclusive property therein, may 
 apply by petition to the governor of the province for a patent. 
 
 The governor on due proceedings being had is to grant such 
 patent, which is available to the grantee, his heirs, lawful re- 
 presentatives or assigns for the period of fourteen years. 
 
 An original and true inventor is not deprived of his right 
 to take out a patent in the province by reason of his having 
 previously taken out a patent in a foreign country, and of the 
 same having been published at any time within six months 
 next preceding the filing of the specification. 
 
 The inventor before receiving his patent must make a 
 solemn declaration that he believes that he is the true inven- 
 tor or discoverer of the art, machine, or improvement for 
 which he solicits a patent. He must deliver such a written 
 
458 COLONIAL LAW. 
 
 description in duplicate of his invention as will enable a skilled 
 person to make or use it. Drawings, wliere the nature of the 
 invention permits, or specimens of ingredients, must be de- 
 livered with the specification. He may also have to deliver 
 a model if required. 
 
 Patent privileges extend to and include any subject of Her 
 Majesty, being an inhabitant of the province, who in his 
 travels in any foreign country has discovered or obtained a 
 knowledge of, and is desirous of introducing into the provinces 
 any new and useful invention not known and not in use in the 
 province, except inventions discovered or used in the United 
 States of America; or in any part of Her Majesty's dominions in 
 Europe and America. Patents are assignable inlaw either as 
 to the whole interest or any undivided part thereof by an in- 
 strument in writing, which assignment and also every licence 
 must be recorded within two months from the execution thereof. 
 Patents may be issued to the assignee of the inventor, the 
 assignment being first recorded, and the application being 
 duly made and solemnly declared by the inventor. 
 
 In case of the death of the inventor, the right of applying 
 for and obtaining a patent devolves on his executor or adminis- 
 trator in trust for the heir-at-law of the deceased, if he died 
 intestate, or on his legal representative in any other case. 
 Patents may be extended for seven years. 
 Whenever a patent is invalid by reason of a defective 
 specification, then, if the error has arisen from inadvertence, 
 accident, or mistake, and without any fraudulent or deceptive 
 intention, the patentee may surrender such patent and obtain 
 a new patent, to be issued to him for the same invention for 
 the residue of the unexpired period of the original patent, in 
 accordance with the corrected specification. The patentee 
 may disclaim part of the invention claimed by mistake. 
 
 The specification and drawings may be amended. The 
 date of the patent must be marked on each article offered 
 for sale. 
 
 The fee to be paid on presenting the petition is twenty 
 dollars. 
 
CEYLON. 459 
 
 Cape op Good Hope. 
 
 THE law of this Colony is based upon the Patent Law 
 Amendment Act. The application must be made at 
 the office of the Colonial Secretary, where a specification, 
 which may be amended before the issue of the patent, is left. 
 The application is referred to the Attorney-General, whose 
 recommendation is followed. The term is fourteen years. 
 Portions of the inTcntion may be disclaimed, and the letters 
 patent may be assigned. The following fees have to be 
 paid : — 
 
 On depositing specification 
 
 To the Attorney- General for any appointment 
 
 On obtaining letters patent 
 
 At or before the expiration of the third year 
 
 At or before the expiration of the seventh year 
 
 £ 
 
 s. 
 
 d. 
 
 2 
 
 10 
 
 
 
 2 
 
 4 
 
 6 
 
 2 
 
 10 
 
 
 
 10 
 
 
 
 
 
 20 
 
 
 
 
 
 Cetlon. 
 
 AN" inventor must petition the Governor for leave to file a 
 specification of his invention. The petition must be in 
 writing, signed by the petitioner or his agent, and must state 
 his name, condition, and residence, and the nature of the in- 
 vention. An order may be made granting the petitioner 
 leave to file a specification ; and if within six months from the 
 date of the order a specification is filed, letters patent will be 
 granted for the term of fourteen years, and for such further 
 term not exceeding fourteen years as the Governor may think 
 fit, upon petition presented not more than one year and not 
 less than six months before the expiration of the original 
 term. 
 
 The specification must be in writing, signed by the peti- 
 tioner, and must particularly describe and ascertain the nature 
 of the invention, and in what manner it is to be carried out. 
 
 The petition and specification must be left with the Colo- 
 
460 COLONIAL LAW. 
 
 nial Secretary, accompanied by a declaration signed by the 
 petitioner, similar to tbe declaration required in this country ; 
 and if the inventor is absent from Ceylon, by a declaration 
 signed by his agent, to the effect that he verily believes that 
 the declaration purporting to be the declaration of the inven- 
 tor was signed by him, and that its contents are true. 
 
 No specification will be filed until all the fees required are 
 paid. 
 
 An invention will be deemed to be new if it has not — ^before 
 the time of applying for leave to file the specification — ^been 
 publicly used in Ceylon. 
 
 The specification may be amended when it is defective or 
 insufficient, provided that there is no fraud. 
 
 Where the patent has been obtained by fraud, the patentee 
 may, upon proceedings instituted by the true inventor within 
 two years from the date of the petition to file the specification, 
 be compelled to assign the patent to the true inventor. Every 
 petition for leave to file a specification, or the extension of the 
 term of the patent, must be written or printed upon stamped 
 paper of the value of ten pounds. 
 
 India. 
 
 THE Act of the 17th May, 1869, entitles inventors of any 
 new manufacture to petition the Governor- General in 
 Council for leave to file a specification thereof, and gives a 
 form of petition, and authorises the Governor- General in 
 Council to grant the petition ; but he may previously refer it 
 to be reported upon ; and if within six months after the date 
 of the order a specification be filed, the petitioner shall be 
 entitled to a patent for fourteen years, and for such further 
 term not exceeding fourteen years more, as the Governor- 
 General in Council may direct upon petition. 
 
 The order authorising the filing of the specification may be 
 made subject to any conditions and restrictions the Governor- 
 General may direct. 
 
INDIA. 461 
 
 The petition must be accompanied with a declaration by the 
 inventor or his agent, as the case may be. 
 
 No specification can be filed until the necessary fees are 
 paid. 
 
 A book is kept in the office of the Secretary to the Govern- 
 ment of India, to record the petition and specification, and the 
 order for the same, and all orders relating thereto ; such book 
 is open for inspection, and a certified copy of any entry in it 
 may be obtained ; such copy to he prima facie evidence. 
 
 If from mistake or inadvertence a mis-statement has been 
 made in the petition, or specification, or something not new or 
 not invented by the iaventor is stated, he may petition for 
 leave to file a memorandum pointing out such error, defect, 
 or insufficiency, and disclaiming any part of the alleged in- 
 vention, or, in case of any defect or insufficiency of the speci- 
 fication, for leave to file an amended specification. The peti- 
 tion must state how the erroi', defect or insufficiency occurred, 
 and that it was not fraudulently intended. 
 
 No person may have a patent if the invention is not useful, 
 or not new, or not by the petitioner, or if the specification has 
 defects specified, or contains wilful or fraudulent mis-state- 
 ment. 
 
 The patent will be revoked if it appears that it is ; or the 
 mode in which it is exercised is ; mischievous to the State, or 
 generally prejudicial to the public ; or if there has been any 
 breach of the conditions upon which it is granted. 
 
 The importer of an invention will not be deemed to be an 
 inventor within the meaning of the Act, unless he is the actual 
 inventor. 
 
 A patent may be taken out by a foreign inventor. 
 
 An invention is deemed to be a new invention, if it has not, 
 before the time of applying for leave to file the specification, 
 been publicly used in India, or in any part of the United 
 Kingdom of Great Britain and Ireland, or been made publicly 
 known in any part of India or of the United Kingdom by 
 means of a publication, either printed or written, or partly 
 printed and part written. But public use or knowledge is of 
 
462 COLONIAL LAW. 
 
 no effect, if made in fraud or breach of confidence — unless ac- 
 quiesced in ; and public use by or for the inventor himself for 
 a year prior to the date of his petition will not prevent his 
 taking out a patent. 
 
 An inventor who has obtained an English patent may, 
 within twelve calendar months from the date of such patent, 
 petition for leave to file a specification of such invention ; and 
 in. such a case, the invention will be deemed to be a new in- 
 vention, if it was not publicly known or used in India at or 
 before the date of the petition for such letters patent, not- 
 withstanding it may have been publicly known or used in 
 some part of the United Kingdom or India before the time of 
 petitioning for leave to file the specification. The petitioner 
 must state that such letters patent have been granted, and the 
 date thereof, and the term during which they are to continue 
 in force. The Indian patent will determine if the English 
 patent is revoked or cancelled ; and will not be allowed to 
 extend beyond the term of the English patent, unless the 
 same is extended in England, in which case the Indian patent 
 may also be extended for the same term. The Court has 
 power, upon an action for infringement, to cause the specifica- 
 tion to be amended where there is no fraud. Where the 
 actual inventor is able to prove that the patent has been 
 fraudulently obtained, the patentee may be compelled to 
 assign the patent to the inventor, and account to him for 
 profits. 
 
 The petition must bear a stamp of the value of 100 rupees. 
 
 Jamaica. 
 
 AN inventor must apply to the governor by petition for 
 letters patent. If the inventor is an absentee the appli- 
 cation may be made by his attorney. The petition must be 
 accompanied with a declaration of belief that the petitioner is 
 the true inventor and also with a specification, and model in 
 case of a machinei and also drawings and specimens. The 
 
NEWFOUNDLAND. 463 
 
 term of tlie grant is fourteen years, and extension may be 
 granted for a further term of seven years. If any letters 
 patent are not brought into operation within two years they 
 will be forfeited and become void. 
 
 The patentee may assign or transfer the whole or any part 
 of his patent, and the assignment must be recorded. 
 
 Patents may be granted to assignees of foreign patents. 
 
 The provisions as to disclaimers are similar to those in force 
 in this country. 
 
 The fee on petition is £5. 
 
 Newfoundland. 
 
 By the law of 1866 it is provided that : Whenever any person 
 whomsoever shall apply to the governor alleging that he has 
 invented and discovered any new and useful art, machine^ 
 manufacture or composition of matter, not previously known 
 or used and shall by petition to the governor signify his desire 
 to obtain an exclusive property in such new invention and 
 discovery, and shall pray that a patent be granted for the 
 same, it shall be lawful for the governor to cause letters patent 
 to be issued which shall recite the allegations in the petition 
 and shall give a short description of the invention and dis- 
 covery, for the term of fourteen years. 
 
 A declaration as to the novelty of the invention must be 
 made before the patent is granted. 
 
 A specification must be delivered at the office of the Colo- 
 nial Secretary, together with drawings, models and specimens 
 according to the nature of the invention. 
 
 The patent may be assigned. 
 
 No applicant will be deprived of his right to a patent by 
 reason of his having previously taken out a patent in any other 
 country, if the same has not been iutroduced into use iu the 
 colony, provided that the colonial patent does not continue in 
 force after the foreign patent has expired. 
 
 Patents maybe granted to the assignee of a person who has 
 
464 COLONIAL LAW. 
 
 taken out a patent abroad, but not for any invention made 
 abroad for which no patent has been there obtained. 
 
 The patent will be void if not worked within two years from 
 the grant. 
 
 The Act contains provisions for disclaiming portions of the 
 specification, and in certain cases for the surrender and re- 
 issue of the letters patent. 
 
 The sum of £5 must be deposited with the Colonial Secre- 
 tary upon an application for a patent. 
 
 New South Wales. 
 
 ' I ""HE governor may grant letters of registration, for a 
 JL period of not less than seven or more than fourteen 
 years, for all inventions or improvements in the arts or manu- 
 factures, to the author or authors, or designer or designers, or 
 to his or their agents or assignees. Such letters must be 
 registered in the supreme court within three days after the 
 grant. 
 
 The applicant must deposit with the colonial treasurer the 
 sum of £20, and after such deposit present a petition to the 
 governor, specifying the particulars of his invention. 
 
 The grantee of any such letter of registration may assign 
 the same by an instrument in writing under his hand and seal, 
 to be registered in the supreme court in the same manner and 
 within the same period as the original letter. 
 
 Any such letter may be repealed in the same manner as 
 other grants of the Crown. 
 
 New Zealand. 
 
 THE patent laws of this colony are similar to those in 
 force here. 
 All applications for the grant of letters patent must be made 
 to the governor by petition. 
 
 The following fees must be paid : 
 
TASMANIA. 465 
 
 £ s. d. 
 On depositing specification . . . . 2 10 
 
 On obtaining letters patent . . . . 2 10 
 
 At or before the expiration of the third year .15 
 No person may receive letters patent for an invention or 
 discovery for which letters patent or any like protection has 
 been issued in Great Britain or any other colony, but the 
 governor may on the application of the patentee or his 
 assignee upon payment to the colonial treasurer of the sum 
 of ^10 grant letters of registration, which have the same effect 
 as letters patent to continue during the term of the original 
 patent. 
 
 Queensland. 
 
 NO patent laws have been enacted in the colony of Queens- 
 land since its separation from New South jWales, but 
 the Colonial Act of New South Wales (see swpTo) was con- 
 tinued in force in this colony by an order in council of the 
 6th November, 1859. 
 
 South Australia. 
 
 THE law in this colony is similar to that of New South 
 Wales (sMpra). 
 
 Tasmania. 
 
 THE patent law of Tasmania is similar to the English 
 law. 
 The following fees must be paid : 
 
 On depositing specification 
 
 To the law officer for any appointment 
 
 On obtaining letters patent 
 
 At or before the expiration of the third year 
 
 At or before the expiration of the seventh year 
 
 H H 
 
 £ 
 
 s. 
 
 d. 
 
 2 
 
 10 
 
 
 
 2 
 
 4 
 
 6 
 
 2 
 
 10 
 
 
 
 15 
 
 
 
 
 
 20 
 
 
 
 
 
466 COLONIAL LAW. 
 
 Teinidad. 
 
 THE Registrar General on an application by or on behalf 
 of an inventor, and on the delivery of a declaration of 
 novelty, together with a specification signed by the applicant 
 or his agent, may deliver a certificate which protects the inven- 
 tion for the term of fourteen years. 
 The certificate may be assigned. 
 
 Any portion of the invention may be disclaimed either by 
 the inventor or by his assignee. 
 The following fees mnst be paid : 
 
 £ s. d. 
 On leaving any declaration of invention and 
 
 specification . . . . . 10 
 
 Every disclaimer . . . . -200 
 
 ViCTOBIA. 
 
 THE patent law of Victoria is similar to the English 
 law. 
 The same fees must be paid as in Tasmania. 
 
INDEX. 
 
 ACTIOlSr, 
 
 pending not affected by disclaimer, 138. 
 
 not to be brought without leave of law-officer where disclaimer, 
 139. 
 
 ACTION FOE, INFRINGEMENT. 
 
 Assignee may sue either alone or jointly with patentee, 285. " 
 
 though no infringement since assignment, 285. 
 
 of separate part need not join person who has interest in another 
 part, 286. 
 
 may sue though defendant original grantee, 286. 
 
 assignees tenants in common, right descends to survivor, 287. 
 
 of bankrupt may sue, 287. 
 
 particulars of breaches and notice of objections must be deli- 
 vered, 287. 
 
 effect of, 289. 
 
 may not go beyond pleas, 289. 
 
 must be precise, 289. 
 
 books must be specified, 290. 
 
 notice of objections is to give plaintiff more information than 
 pleas, 290. 
 
 not conclusive may be amended, 291. 
 
 further notice may be required, 292. 
 
 interrogatories may be delivered, 292. 
 
 form and extent of, 292. 
 
 what discovery may be required, 292. 
 
 inspection of machinery may be ordered, 294. 
 
 affidavit in support of application for, must be clear and precise, 
 294. 
 
 when application may be made, 294. 
 
 not granted as matter of course, 294. 
 
468 INDEX. 
 
 ACTION FOR INFRINGEMENT— conrtraaerf.. 
 
 of books prima facie right must be established, 295. 
 
 injunction may be granted, 296. 
 
 rule for, is to show cause in first instance only, 296. 
 
 costs as between attorney and client, 296. 
 
 of particulars, 297. 
 
 judge's certificate must be given, 298. 
 
 of preparing for trial, 299. 
 
 of special jury, 300. 
 
 account may be granted, 300. 
 
 but not where damages, 300. 
 
 retrospective, not granted before final judgment, 300. 
 
 evidence necessary, 301. 
 
 granted as soon as verdict given, 301. 
 
 what account is of, 302. 
 
 ACCOUNT, 
 
 at law, 300. See Action toe iNrEiNGEMENi. 
 in equity, 330. See Suit in Equity. 
 
 ACCOUNTS, 
 
 on extension of term of letters patent, 205. See Extension op 
 Teem. 
 
 ACCURACY, 
 
 of specification important, 76. 
 
 ADAPTATION, 
 
 of machine to new purpose, 267. 
 
 ADDITION TO EXISTING MACHINB, 
 good subject matter of patent, 50. 
 must be new and of benefit to public, 5 1 . 
 if not Crown deceived in grant, 51. 
 valid, though discoveries made since claim, 52. 
 to existing patent good, 53. 
 
 can only be used with licence of former patentee, 53 
 value of, question for jury, 53. 
 
 specification of patent for, must be for addition only, 
 must be distinguished, 100. 
 
 ADDRESSES, 
 
 of licensees must be given in answer, 329. 
 
INDEX. 469 
 
 ADMISSIONS OF DEFENDANT, 
 effect of, 311. See Suit m Equity. 
 
 ADVEKTI8EMENTS, 
 
 may be required on applying for disclaimer or memorandum of 
 alteration, 139. 
 
 protection under Act to be advertised, 154. 
 
 also notices of intention to proceed or oppose, 154. 
 
 on extension, 214. See Extension oj Tehm. 
 AFFIDAVITS, 
 
 in opposition to grant, 163. 
 
 in support of an application for inspection must be cleaj-, 294. 
 
 in support of injunction, 327. See Suit in Equity. 
 AGENT, 
 
 petition by, for foreign patentee, 188. See Extension op Teem. 
 
 duty of, 168. See Method op Obtaining Lettees Patent. 
 AGREEMENT, 
 
 to pay stamp-duties, 169. 
 
 for assignment, 229. 
 ALIEN, 
 
 may be patentee, 10. 
 
 AMENDMENT, 
 
 of provisional specification, 142. 
 
 title, 149. 
 
 complete specification, 168. See Specification. 
 
 petition for extension, 216. See Extension op Teem. 
 
 particulars of objection. See Action poe Inpeingement. 
 AMERICA, UNITED STATES OF,' 
 
 patent law of, 450. 
 
 AMOUNT OF LABOUR IN INVENTION, 
 
 not considered, 34. 
 
 ANALYSIS, 
 
 not granted at law, 295. 
 
 but win be in equity, 336. 
 
 ANSWER. See Suit in Equity. 
 
 APPEAL, 
 
 no appeal from order of Master of the Rolls expunging entry on 
 register, 242. 
 
470 INDEX. 
 
 ART, 
 
 terms of, to be explained by jmy, 1 12. See Specipioation. 
 
 ASSIGNEE, 
 
 may disclaim, 137. 
 
 may petition for extension, 186. See Extension or Tebm. 
 interest of bankrupt in patent passes to, 231. 
 may sue for infringement, 285. See Action roE Inibingement 
 and Suit in Bqtjitt. 
 
 ASSIGNMENT, 
 
 power to assign given by letters patent, 227. 
 
 more tban twelve persons may be interested in patent, 227. 
 
 grant to several not constitute partnersMp, 228. 
 
 agreement for assignment, 229. 
 
 Statute of Frauds, 230. 
 
 sbould be by deed, 230. 
 
 wben void, 231. 
 
 bankruptcy of patentee, 231. 
 
 to tenants in common or joint tenants, 232. 
 
 no implied warranty on, 233. 
 
 by patentee who has manufactory abroad, 233. 
 
 consideration for failure of, 236. 
 
 money paid for patent obtained by fraud may be recovered, 237. 
 
 patentee estopped from contesting validity of patent on, 237. 
 
 purchaser may set up defence of fraud, 238. 
 
 ATTORNEY-GENERAL, 
 
 opposition by, 207. See Extension op Term. 
 
 AUSTRALIA, 
 
 Victoria, patent law of, 466. 
 
 AUSTRIA, 
 
 patent law of, 421. 
 
 BAVARIA, 
 
 patent law of, 423. 
 BELGIUM, 
 
 patent law of, 425. 
 
 BOOK, 
 
 publication in, vitiates patent, 5, 17. 
 
 even though invention not reduced into practice, 12. 
 
 secus if book not circulated, 13. 
 
INDEX. 471 
 
 BOOK — continued. 
 
 publication in foreign book, 13. 
 
 sale of, not necessary, 14. 
 
 mention of, iu particulars of objection, 29"0. 
 
 account, inspection of, 295. 
 
 BRAZIL, 
 
 patent law of, 428. 
 
 BREACHES, 
 
 particulars of. See Action fob Inpeingement : Suit in 
 Equity: Peoceedings to Repeal Letters Patent. 
 
 BRITISH GUIANA, 
 
 patent law o , 456. 
 
 CANADA, 
 
 patent law of, 457. 
 
 CAPE OF GOOD HOPE, 
 
 patent law of, 459. 
 
 CAVEAT. See Disclaimer: Method oe Obtaining Lettees 
 Patent : Extension op Term. 
 
 CERTIFICATE, 
 
 of validity of patent having come in question, 297. 
 wbat sbould be, 298, 299. 
 may not be granted after taxation, 298. 
 
 nor if suit compromised, 298. And see Action eob Inpeinge- 
 MENT : Suit in Equity. 
 
 CERTIFIED COPIES, 
 
 of specification to be e^ddence in Scotland and Ireland, 172. 
 
 CEYLON, 
 
 patent law of, 459 . 
 
 CHEMICAL EQUIVALENTS. See Inpeingement. 
 
 CHEMISTRY, 
 
 discoveries in, if made practically useful, good subject matter, 68. 
 
 CLAIMS. See Specification: Disclaimer. 
 
 CLERICAL ERRORS, 
 
 amending. See Method op Obtaining Letters Patent. 
 
 COLOURABLE DIFFERENCE. See Infringement. 
 
472 INDEX. 
 
 COMBINATION, 
 
 of known articles in new measure, good subject matter, 54. 
 
 but must be new and useful, 54. 
 
 discovery of a property in combination of new articles, 56. 
 
 does not claim each part as new, 56. 
 
 need not be express claim of particular parts of, 56. 
 
 novelty of, test, 56. See Specification : Ini^ingement. 
 
 COMMISSIONERS OF PATENTS. See OmcE op the Com- 
 
 MISSIONEBS. 
 
 COMMON, 
 
 tenants in, rights of, 232. 
 
 COMMUNICATION, 
 
 from abroad may be patented, unless confidential, 10. 
 but confidential conmiunicatiomnay be improved upon, 10. 
 fact of, must be stated in declaration on application for patent, 
 
 141. 
 and in petition for extension, 216. And see Specipication : 
 Extension op Tbkm op Patent. 
 
 COMPLETE SPECIFICATION. See Specification. 
 
 COMPROMISE, 
 
 certificate of validity, not given where, 298. 
 
 CONDITION, 
 
 voiding letters patent, 153. 
 CONFIRMATION, 
 
 of letters patent, 220. 
 
 only granted where patentee ignorant of previous invention, 
 
 221. 
 when application to be made, 222. 
 power of Judicial Committee, 222. 
 what patentee must prove, 222. 
 action for infringement not sustainable before petition heard, 
 
 223. 
 Previous invention must have been abandoned, 223. 
 not granted adversely to rights of former patentee, 224.' 
 extended term may be confirmed, 224. 
 user in Scotland, 225. 
 mode of procedure on petition for, 225. 
 evidence, 225. 
 
INDEX. 473 
 
 COSrSIDERATION, 
 failure of, 236. 
 
 CONSOLIDATION OF SUITS. See Suit in Equity. 
 
 CONSTRUCTION, 
 
 rules of. See Specification. 
 
 COSTS, 
 
 before law officer, 155, 164. 
 of unsuccessful caveat, 164. 
 where objection not unreasonable, 164. See Extension op 
 
 Term oi' Patent, Action eor iNrKiNGEMENT : Sun in 
 
 Equity. 
 
 CROWN, 
 
 when deceived in grant, 51. 
 
 prerogative of, 156. 
 
 may use invention without licence of patentee, 156. 
 
 DAMAGES,. 
 
 at law, 278. See Iotbingement. 
 
 in equity, 332. See Suit in Equity. 
 
 DATE, 
 
 is of day of provisional protection, unless fraud, when of appli- 
 cation for sealing, 164. 
 
 reckoned inclusively, 164. 
 
 new letters patent, not void, because dated after expiration of 
 original term, 183. 
 
 DEATH, 
 
 of patentee during provisional protection, patent may be granted 
 to his personal representative, 158. 
 
 DECLARATION, 
 
 in support of patent, 141. 
 
 form of, 385. See Method op Obtaining Letters Patent. 
 
 DECREE, 
 
 enrolment of, 321. 
 
 DEDUCTIONS, 
 
 from accounts, 256. See Extension op Term. 
 
474 INDEX. 
 
 DELAY, 
 
 in taking patent, not bar to right, 33. 
 
 in applying for great seal, 163. 
 
 in using invention evidence of inutility, 200. 
 
 in filing accounts before Privy Council, 215. 
 
 in applying for injunction, 313. See Stjit in Equity 
 
 DENMARK. 
 
 patent law of, 430. 
 
 DESTROY-ED, 
 
 letters patent, others may be issued, 159. 
 
 DESTRUCTION, 
 
 of articles made in infringement may be ordered, 337. 
 unless patent is for combination, 337. 
 
 DIRECTORS, 
 
 of company may be made to pay costs personally, 338. 
 
 DISCLAIMER, 
 
 any patentee having obtained leave of law officer may disclaim 
 
 any part of title or specification, 131. 
 reason must be stated, 131. 
 is no part of disclaimer, 132. 
 meaning of word " extend " in Act, 132. 
 
 object of Act, that unnecessary matter may be struck out, 132. 
 but bad specification cannot be made good by adding words, 133. 
 all claiming clauses may be struck out, 135. 
 effect of, is to strike out parts disclaimed, X35. 
 not read, as explanatory of what remains, 136. 
 verbal alteration merely not a void patent, 136. 
 not necessary to disclaim matters which form no part of inven- 
 tion, 136. 
 when filed, to be deemed part of specification, 136. 
 operates as part of specification, from date of grant, 136. 
 filing of copy sufficient, 137. 
 assignee may disclaim, 137. 
 filing conclusive, as to rights of party, 138. 
 does not affect actions pending, 138. 
 not retrospective, 138. 
 
 actions not to be brought without leave of law officer, 139. 
 he may require disclaimer to be advertised, 139. 
 
INDEX. 475 
 
 BISCLAIWEU— continued. 
 
 caveats may be entered against, 139. 
 
 applications for disclaimers and caveats to be at oflSce, 139. 
 
 stamp duties on, 140. 
 
 disclaimer pending action of scire facias, 342. 
 
 DISCOVERY, 
 
 at law, 292. See Action for Infringement. 
 in equity, 328. See Suit in Equity. 
 
 DRAWINGS, 
 
 in aid of specification, 118. See Specification. 
 size of, 142. 
 
 DUPLICATE, 
 
 of patent destroyed or lost, 159. 
 
 DURATION, 
 
 of letters patent, 2. 
 
 when foreign patent, 189. See Extension of Term. 
 
 ENROLMENT, 
 of decree, 321. 
 
 EQUITABLE ASSIGNEE, 
 
 petition by, for extension, 188. 
 
 opposition by, 215. 
 EQUIVALENTS, 
 mecbanical, 246." 
 
 chemical, 248. See Intringement. 
 
 ESTOPPEL. See Assignment. 
 
 EVIDENCE, 
 
 of skilled persons as to sufficiency of specification, value of, 130 
 
 delay in using invention evidence of inutility, 200. 
 
 to prove accounts, 211. 
 
 on extension, 218. See Extension of Term. 
 
 in support of action, 280. See Infringement. 
 
 in support of issues, 319. 
 
 rejection of, ground for new trial, 322. And see Suit in Equity 
 
 on scire facias, 342. 
 
 EXCLUSIVE LICENCE, 
 
 not invalidate patent, 233. See Licences. 
 licensee may sue for infringement, 287. 
 
476 INDEX. 
 
 EXHIBITING TO SALE, 
 not infrmgement, 273. 
 
 EXHIBITION, 
 
 of invention at International Exhibitions not prejudice right, 32. 
 
 EXECUTORS, 
 
 may petition for extension, 186. 
 of assignee also, 188. 
 
 EXPERIMENTS, 
 
 by patentee, 21. ^ee Usee. 
 
 if necessary by workmen, patent bad, 120. See Specipication. 
 
 loss by, allowed in accounts on extension, 207. 
 
 with known articles not infringement, 276. 
 
 EXPUNGING, 
 
 entries in register, 241. See Eegisteation. 
 
 EXTENSION OF TERM, 
 
 obtained by petition to Judicial Committee, 175. 
 prosecuting application with effect, 176. 
 limit of time, 178. 
 
 may be for lesser term than prayed, 179. 
 form of report, and order in Council, 180. 
 jurisdiction of Court, 181. 
 
 renewed patent term of, cannot be extended, 181. 
 order for extension may be revoked, 182. 
 extension not matter of course, though no opposition, 182. 
 effect of extension, 183. 
 on several patents, 183. 
 date of new patent, 183. 
 part of patent only may be extended, 183. 
 
 query, whether useless part must be disclaimed on exten- 
 sion, 184. 
 validity of patent not adjudicated upon by Court, 184. 
 but bad part not extended, 184. 
 suit pending, no objection to extension, 185. 
 cognate patents, how extended, 186. 
 
 persons who may petition, those in whom legal estate vested, 186. 
 administrators, executors, trustees of company, 186. 
 assignees, 186. 
 reasons for granting extension to, 187. 
 
INDEX. 477 
 
 EXTENSION OF TETiM—omtinued. 
 
 merit in patronizing patentee, 187. 
 
 extension to, refused where risk small, 187. 
 
 executor of, 188. 
 
 equitable assignee, 188. 
 
 importer of invention, 188. 
 
 agent for foreign patentee, 188. 
 
 petition to revoke, 189. 
 
 foreign patent, letters patent obtained in United Kingdom for, 
 not to continue in force after expiration of, 189. 
 
 foreign patent determined by law, 191. 
 
 English patentee not prejudiced by subsequently taking out 
 foreign patent, 191. 
 
 jurisdiction of Court where foreign patent, 191. 
 
 policy of act, 191. 
 
 foreign patent taken out shortly after English, 192. 
 
 grounds of extension generally, merit, utility, want of remu- 
 neration, 193. 
 
 interests of pubKc consulted, 194. 
 
 merit of inventor, 193. 
 
 grounds of estimating merit, 195. 
 
 merit of ingenuity and merit of utility, 197. 
 
 no objection that improvement small, 197. 
 
 simplicity of invention, 197. 
 
 improvement on original invention, 197. 
 
 manufacture altered, 198. 
 
 some invention required, 198. 
 
 merit of importer, 198. 
 
 circumstances considered where merit, 198. 
 
 utility of invention, 199. 
 
 public benefit must be proved, 199. 
 
 extent of benefit, 199. 
 
 if detriment to public no extension, 199. 
 
 nor if specification too general, 200. 
 
 delay in using invention evidence of inutility, 200. 
 
 may be explained in certain cases, 201. 
 
 remuneration, want of, principal question, 202. 
 
 merit and utUity being proved, 202. 
 
 reason for non-remuneration must be given, 202. 
 
 if benefit to public great, extension granted though profits, 203. 
 
 profits from foreign patent considered, 203. 
 
478 INDEX. 
 
 EXTENSION OF TERM— continued. 
 position of assignees, 204. 
 importers, 204. 
 
 patent must be taken as a whole, 204. 
 
 act of parliament obliging use of invention not an objection, 204. 
 when application to be made, 205. 
 accounts must be clear, 205. 
 what they must contain, 206. 
 
 deductions to be allowed in estimating profits, 206. 
 manufacturer's profit, 206. 
 loss by litigation, of time, by experiments, 207. 
 royalties paid to agent, 208. 
 
 patentee also manufacturer must keep separate accounts, 208. 
 distinction between profits of patentee and profits of mannfac- 
 
 turer, 209. 
 royalties from licensees, 210. 
 
 com-se of procedure where accounts^rma /acie satisfactory, 210. 
 evidence to prove accounts, 211. 
 terms may be imposed in certain cases, 211. 
 partners, licensees, assignees, 212. 
 mode of procedure on application, 213. 
 advertisements, 214. 
 patentee abroad, 214. 
 
 name of equitable assignee must appear in advertisements, 215. 
 they must be proved before case heard, 215. 
 documents to be lodged at Privy Council Office, 215. 
 delay in filing, 215. 
 
 the petition must be clear and title of petitioner made out, 215. 
 assignees must state title strictly, 216. 
 amendment of petition, 216. 
 
 caveats against extension may be entered, 216, 217. 
 opposition by Attorney General, 217. 
 two counsel only heard, 217. 
 inspection of accounts not ordered, 217. 
 evidence in support, rules of, similar to evidence at law, 217. 
 costs not given if no ground for opposition, 218. 
 where petition abandoned, 218. 
 generally given to opposers, 218. 
 unless opposition not properly conducted, 218. 
 gross sum given to several who represent same kind of opposi- 
 tion, 219. 
 
INDEX. 479 
 
 FEES, 
 
 on grant of patent, 173. 
 
 FILING. See Specipication : Disclaimer. 
 
 FOREIGN PATENT, 
 
 English patent ceases on determination of, 189. 
 
 FOREIGN SHIPS, 
 user in, 165. 
 
 FOREIGNER, 
 
 may be patentee, 9. 
 
 FRANCE, 
 
 patent law of, 430. 
 
 FRAUD, 
 
 patent obtained by, 154 — 162. See Specification. 
 
 money paid for use of patent obtained by, may be recovered, 236. 
 
 FRAUDS, 
 
 statute of, 230. 
 
 GRANTEE OF LETTERS PATENT, 
 
 must be true and first inventor, and invention must be tbat of 
 
 patentee himself, 5. 
 if not, crown deceived, 6. 
 and interest of public affected, 6. 
 simultaneous discoverers, first patentee inventor, 7. 
 invention by servant belongs to him, 7. 
 but patentee may have assistance, 7. 
 suggestions by mechanic belong to employer, 7, 8. 
 importer may be patentee, 8. 
 but invention must be new in England, 8. 
 trustee may take out patent, 9. 
 communication from abroad may be patented, 9. 
 unless confidential, 9. 
 alien may be patentee, 10. 
 and foreigner who has parted with his interest abroad, 10. 
 
 GROUNDS OF EXTENSION. See Extension op Teems. 
 
 HANOVER, 
 
 patent law of, 433. 
 
480 INDEX. 
 
 IGNORANCE, 
 
 wilful, of previous invention, 33. 
 
 no excuse for infringement, 277. 
 IMPORTER, 
 
 of invention may be patentee, 8. See Geantbe op Lketeks Patent. 
 may petition for extension, 188. 
 
 merit of, 198. 
 IMPROVEMENTS, 
 
 on existing machine or process good subject matter, 50. 
 
 must be new and of benefit to pubHc, 51. 
 
 if not, crown deceived in grant, 51. 
 
 claim for, valid though discoveries since made, 52. 
 
 on existing patent, can only be used by licence of former 
 patentee, 53. 
 
 value of, question for jury, 53. 
 
 in performing operation by well-known mode not subject- 
 matter, 63. 
 
 must be some invention, 64. 
 
 or discovery, 65. 
 
 real alteration in original idea good, 65. 
 
 specification of patent for, must be for improvement only, 96. 
 
 must be distinguished, 100. 
 
 on existing patent not infringement, 276. 
 INDEXES, 
 
 to specifications, disclaimers, and memoranda of alteration, 173. 
 INDIA, 
 
 patent law of, 460. 
 INFRINGEMENT, 
 
 by government, 156. 
 
 use of invention for profit is, 243. 
 
 colourable difference only is, 243. 
 
 substance of invention to be considered, 244. 
 
 use of certain proportions, 245. 
 
 improvements by defendant, no answer, 245. 
 
 mechanical equivalent, use of, is, 246. 
 
 or chemical equivalent, 248-261. 
 
 use of any portion of combination, which is new, 261. 
 
 i. e. new in itself or effect, not merely in application or material, 
 265. 
 
 infringed part need not have been expressly claimed, 265. 
 
INDEX, 481 
 
 INTRINGEMENT— conifraaerf. 
 
 old rQacMne to work new materials not subject of patent, and 
 therefore cannot be infrmgement, 266. 
 
 part used must be for same purpose, 266. 
 
 adaptation of machine to another and additional purpose is 
 infringement, 267. 
 
 new combination of old materials for same purpose, no infringe- 
 ment if not mere colourable ev.asion, 268. 
 
 application of different machinery for same purpose not, 269. 
 
 patent for application of principle not infringed if different 
 application of principle, 270. 
 
 patentee who has discovered principle as well as mode of carry- 
 ing it into effect entitled to all modes of carrying it into 
 -, effect, 271. __ „__———- 
 
 acts done on high seas not, 272. 
 
 contemporaneous inventor, 272. 
 
 sale, making for, of n patented article is, 273. 
 
 though no sale effected, 273. 
 
 exhibiting to sale not, 273. 
 
 nor making for amusement and not for profit, 273. 
 
 sale in this country of articles manufactured abroad is, 274. 
 
 sending to this country of patented articles made abroad is, 
 though no sale, 276. 
 
 manufacture for exportation is, 276. 
 
 existing patent improvement on, not, 276. 
 
 delay in using invention, no excuse for, 276. 
 
 experiments with known articles not, 276. 
 
 acts done by workmen may be, 277. 
 
 ignorance of existing patent no excuse, 277. 
 
 intention to infringe immaterial, 277. 
 
 damages, patentee entitled to though no loss sustained, 278. 
 
 proof of patent documents, 278. 
 
 two specifications must be compared, 279. 
 
 question of infringement is for the jury, 279. 
 
 evidence in support of patent must be given, 280. 
 
 patent is prima facie evidence of novelty, 280. 
 
 piracy abroad defendant must give negative evidence, 281. 
 
 evidence of what done in trade, 281. 
 
 plaintiff's witnesses can only give negative evidence as to novelty, 
 _281. 
 
 I I 
 
482 INDEX. 
 
 INFRINGEMENT— cow&aerf. 
 
 validity of patent assumed, 282. 
 sale of similar articles, evidence of infringement, 282. 
 unless patent for mode of manufacture, 283. 
 evidence of motives for prior user inadmissible, 284. 
 patentee who has assigned may be witness, 284. 
 evidence of experiments conducted with a view to litigation dis- 
 trusted, 284. 
 
 INJUNCTION, 
 
 at law, 296. See Action roB Intmngement. 
 in equity. See Suit in EquiTT. 
 
 INSPECTION, 
 
 of accounts on extension not ordered, 217. 
 at law, 294. See Action roE Infringement. 
 in equity, 335. See Suit in Equity. 
 
 INTENTION, 
 
 to infringe immaterial, 277. 
 
 INTERNATIONAL EXHIBITIONS, 
 
 not to prejudice right of inventor to patent within six months, 32. 
 
 INTERROGATORIES, 
 
 at law, 296. See Action fob, Inpeingement. 
 in equity, 303. See Suit in Equity. 
 
 INVENTION, 
 
 amount of labour bestowed immaterial, 34. See Subject Matteb. 
 
 INVENTOR, 
 
 See Grantee of Letters Patent. 
 
 IRELAND, 
 
 copies of specifications, etc., transmitted to, 172. 
 
 ISSUES, 
 
 trial of, 338. See Suit in Equity. 
 
 ITALY, 
 
 patent law of, 435. 
 
 JAMAICA, 
 
 patent law of, 462. 
 
 JOINT-GRANTEES, 
 
 one of may work invention, 232. 
 
 may not prejudice each other's rights by entries on register, 241 . 
 
INDEX. 483 
 
 JOINT-TENANTS, 
 
 patent vested upon trust for, query whether any one may work for 
 his own benefit, 232. 
 
 JUDICIAL COMMITTEE, 
 
 See Extension or Term. 
 
 KNOWN SUBSTANCE, 
 
 adaptation of, to new purpose good subject matter, 67. 
 
 LAW OFFICER, 
 
 reference to on application for patent, 143. 
 may order title to he amended, 149. And see Method op 
 Obtaining Lettees Patent. 
 
 LETTERS PATENT, 
 definition of, 1. 
 principles of grant, 2. 
 term of, 2. 
 object of grant, 3. 
 
 not monopoly in sense of old definition, 3. 
 to whom granted, 5. See Geantee of Lettees Patent. 
 delay in taking out no bar to grant, 33. 
 subject matter of must be new and useful, 11. 
 obstructive, not supported, 74. 
 
 grant of, 141. See Method op Obtaining Lettees Patent. 
 form of, 388. 
 transcripts of sent to Scotland and Ireland, 171", 172. 
 
 LICENCE, 
 
 power to grant contained in patent, 227. 
 may be by verbal agreement, 232. 
 need not be under seal, 232. 
 
 does not require stamp if no pecuniary consideration, 232. 
 includes all privileges of vendee, 232. 
 exclusive, grant of, not invalidate patent, 233. 
 no implied warranty of patent on, 233. 
 
 covenant to use patented invention only is not covenant in re- 
 straint of trade, 239. 
 
 LICENSEE, 
 
 cannot recover money paid for use of void patent, 236. 
 unless fraud, 237. 
 
484 INDEX. 
 
 LICENSEE — continued. 
 
 estopped from contesting validity of patent during continuance 
 of licence, 237. 
 
 but may after licence determined, 238. 
 
 exclusive may sue, 287. 
 LOSS, 
 
 of letters patent others may be issued, 158. 
 
 by litigation allowed in accounts on extension, 207. 
 
 MANUFACTURE, 
 
 new, what is, 33. Sec Stjbject Matter. 
 
 MANUFACTURER, 
 profit of, 206. 
 patentee also, 208. 
 
 MARKING, 
 
 machines made in violation of patent, 337. 
 
 MEMORANDUM OF ALTERATION, 
 
 See DisoLAiMEE. 
 
 MERIT, 
 
 ground for extension, 195. See Extension of Term. 
 
 METHOD, 
 
 of manufacturing, 36. 
 meaning of, 40. 
 
 METHOD OF OBTAINING LETTERS PATENT, 
 petition for grant, first step, 141. 
 contents of petition, 141. 
 
 application must be for one invention only, 141. 
 declaration in support, 141. 
 
 communication from abroad, fact of must be stated, 141. 
 petition and declaration to go with provisional specification to 
 
 be left at office, 142. 
 size of documents, 142. 
 provisional specification, clerical errors in may be amended, 
 
 142. 
 reference to law officer, 143. 
 title of patent must be distinct, 143. 
 may be amended, 149. 
 no right of priority gained by leaving provisional specification, 
 
 149. 
 
INDEX. 485 
 
 METHOD OF OBTAINING LETTERS FAT'E^T— continued. 
 
 complete specification may be left instead of provisional speci- 
 fication, such deposit to confer for six months same rights 
 as letters patent, 150. 
 
 drawings with size of, 150. 
 
 previous applicant for similar patent not prevented from ob- 
 taining grant, 151. 
 
 variance between provisional and complete specifications, 151. 
 
 complete specification need not extend to every thing con- 
 tained in provisional specification, 152. 
 
 provisional specification maybe in some respects incomplete, 152. 
 
 cannot be read for purpose of interpreting complete specifica- 
 tion, 153. 
 
 conditions voiding patent, 154. 
 
 provisional or complete specification obtained in fraud not 
 invalidate letters patent, 154. 
 
 advertisements in "London Gazette," 154. 
 
 notice to proceed, when to be left, 155. 
 
 specifications and objections to be referred to law officer, who 
 may order costs to be paid, 155. 
 
 law officer to cause warraiit to be made for sealing, 155. 
 
 when appKcation for warrant to be made, 155. 
 
 time for application may be extended, 156. 
 
 issue and extent of letters patent, 157. 
 
 not issued after three months fi-om date of warrant, 157. 
 
 except in certahi cases, 158. 
 
 where applicant dies during continuance of protection, grant 
 may be to personal representatives, 158. 
 
 opposing grant before Lord Chancellor, procedure, 159. 
 
 must have been opposition before law officer, but reason for not 
 doing so may be explained, 159. 
 
 time for opposing may be extended, 159. 
 
 duty of law officer where simUar inventions, 160. 
 
 letters patent sealed unless clearly bad, 160. 
 
 person who first obtains patent has pi-iority, 160. 
 
 later patent not allowed to cover any part of earlier, 161. 
 
 reference to law officer where patent sealed and another applied 
 for which is objected to, 161. 
 
 patent sealed though question of ft-aud, 162. 
 
 terms may be imposed on sealing, 162. 
 
486 INDEX. 
 
 METHOD OF OBTAINING LETTERS FATENT— continued. 
 delay in applying for great seal, 163. 
 
 orders of Chancellor drawn up by registrar in attendance, 163. 
 affidavits in opposition to grant, 163. 
 substituted service of petition, 163. 
 caveat, effect of, 163. 
 
 costs of, paid by person entering, if unsuccessful, 163. 
 taxed as between party and party, 164. 
 costs not given where opposition reasonable, 164. 
 date of patent, 164. 
 antedated same validity, 164. 
 use in foreign ships of invention, 165. 
 penalty for using name of patentee, 165. 
 specifications to be filed, 166. 
 filing cannot be dispensed with, 166. 
 time for, 167. 
 may be extended, 167. 
 
 amending clerical errors completes specification, 168. 
 duty of patent agent, 168. 
 stamp duties to be paid, 168. 
 
 MEXICO, 
 
 patent law of, 438. 
 
 MISTAKES, 
 
 in specification amending, 168. 
 
 MODE, 
 
 of manufacturing, 36. 
 meaning of, 40. 
 
 MONOPOLY, 
 
 definition of, 1. 
 
 MUNITION^ OF WAR, 
 
 improvement in, 157. 
 
 NEWFOUNDLAND, 
 
 patent law of, 463. 
 
 NEW SOUTH WALES, 
 patent law of, 464. 
 
 NEW ZEALAND, 
 
 patent law of, 464. 
 
INDEX. 487 
 
 NEW TRIAL, 
 
 motion for, 321. See SuiT IN Equity. 
 
 NON-USER, 
 
 evidence of inutility, 200. See Extension op Teem. 
 NOTICE, 
 
 to proceed with application for patent, 154. See Mode op 
 obtaining Letteks Patent. 
 
 of objections at law, 287. See Action poe Infeingemeht. 
 
 in equity, 322. See Suit in Equity. 
 
 on repeal, 340. See Peoceedings to eepeal Patent. 
 NOVELTY. See Publication Usee. 
 
 patent void if what claimed as new not so, as Crown deceived 
 in grant, 61. 
 
 combination must possess, 54. 
 
 test of, 56. 
 
 is question for jury, 72. 
 
 patent is prima facie evidence of, 280. 
 
 OBJECT, 
 
 of patent, 3. 
 
 OBJECTION, 
 
 that patent obtained by fraud, 162. 
 
 notice of at law, 287. See Action poe Inpeingement. 
 
 in equity, 322. See Suit in Equity. 
 
 on repeal, 340. See Peoceedings to Repeal Patent. 
 
 OBSTRUCTIVE PATENT, 
 not supported, 74. 
 
 OFFICE OP THE COMMISSIONERS, 
 
 judicial notice taken of the seal of commissioners, 170. 
 
 commissioners to make rules, 170. 
 
 to report annually to parliament, 171. 
 
 copies of specifications, &c. to be left at oflSce, 171. 
 
 transcript of letters patent forwarded to Scotland and Ireland, 
 
 171. 
 which are to be received in evidence, 172. 
 copies of provisional and complete specifications, and other 
 
 documents open to inspection, 173. 
 indexes printed and published, 173. 
 register of patents kept, 173. 
 
488 INDEX. 
 
 OLD MACHINE, 
 
 application of to analogous purposes cannot be patented unless 
 
 mode of application new, 57. 
 use of in old manner, 61. 
 application of to new materials, 62. 
 
 OMISSION, 
 
 of part of process good subject matter, 67. 
 
 in specification, 80, 125 ; and see Specification. 
 
 OPPOSITION, 
 
 to gra,nt of patent, 154. See Method op Obtaining Patent. 
 
 ORDER, 
 
 of Lord Chancellor on sealing to be drawn up by registrar, 
 
 163. 
 for extension, revocation of, 182. 
 
 PARTICULARS OP BREACHES, 
 
 at law, 288. See Action poe Inphingement. 
 in equity, 322, 339. See Suit in Equity. 
 
 PARTIES, 
 
 at law, 285. See Action tor Inphingement. 
 in equity, 355. See Suit in Equity. 
 
 on action of scire facias, 339. See Pboceedings to Repeal 
 Patent. 
 
 PARTNERSHIP, 
 
 what constitutes, 228. 
 
 may be for working particular patent, or for working it in par- 
 ticular place, 228. 
 
 PATENT. See Letieks Patent. 
 
 PATENTEE, 
 
 penalty for using name of, 165. 
 
 PETITION, 
 
 for grant, form of, 385 ; and see Method op Obtaining Lbttebs 
 Patent: Extension op Teem: Conpiemation: 
 
 POLAND, 
 
 patent law of, 439. 
 
 PORTUGAL, 
 
 patent law of. 441. 
 
INDEX. 489 
 
 POSSESSION, 
 
 under colour of title, 304. 
 
 PREROGATIVE OP CROWK, 
 
 reserved by Act, 156. 
 
 PRBSrCIPLB, - 
 
 patent not granted for, 41. 
 
 but may be for mode of applying, 42. 
 
 patent is then for mode not principle, 42. 
 
 skill of inventor shown in application of, 45. 
 
 mode of applying must be shown, 49. 
 
 claim of any mode bad, 49. 
 
 infringement of patent for application of, 270. 
 
 PRIORITY, 
 
 similar inventions, 149. See Method op Obtaining Lettees 
 Patent. 
 
 PROCEEDINGS TO REPEAL PATENT, 
 
 writ of scire facias may be directed to sheriflf of any county, 340. 
 
 first patentee cannot plead assignment of interest before writ 
 issued, 340. 
 
 prosecutor must deliver particulars of objection, 340. 
 
 no evidence allowed not contained in particulars, 341. 
 
 particulars may be amended, 341. 
 
 pleadings to be delivered not filed, 341. 
 
 applications as to reforming recitals, and suggestions, to be re- 
 ferred to courts of law, 341. 
 
 defendant entitled to begin, 342. 
 
 onus of proof on prosecutor, 342. 
 
 pending suit may be stayed on terms, 342. 
 
 disclaimer pending proceedings, 342. 
 
 Court wiU not stay proceedings on scire facias, or order nolle 
 prosequi to be entered, 342. 
 
 final judgment given in court of law, though letters patent 
 remain in Chancery, 343. 
 
 duty of Lord Chancellor in cancelling patent is merely minis- 
 terial, 344. 
 
 PROCESS, 
 
 or mode of manufacturmg, good subject matter, 36-40. 
 article produced must be either new, better, or cheaper, 39. 
 
490 INDEX. 
 
 FUOCESS— continued. 
 
 patent for, protects each part, 56. 
 
 change in order of, may be good subject matter, 66. 
 
 or omission of part of, 67. 
 
 or new use of old materials in, 68. 
 
 or if chemical curiosity, made practically useful by, 68. 
 
 PRO CONPESSO, 
 
 taking bill, 330. 
 
 PROLONGATION OF PATENT. See Extension op Tebm. 
 
 PROOF, 
 
 of patent documents, 172, 278. 
 
 PROPRIETORS, REGISTER OF. See Registeb. 
 
 PROTECTION, 
 
 provisional, 143. See Method of Obtaining Lettees Patent. 
 
 PROVISIONAL SPECIFICATION, 
 
 form of, 386. And see Method of Obtaining Lettbks Patent. 
 publication in, 17. 
 
 PRUSSIA, 
 
 patent law of, 442. 
 
 PUBLICATION, 
 
 in a book vitiates patent, 11. 
 
 even if not reduced to practice, 12. 
 
 unless book never circulated, 13. 
 
 query, as to publication in foreign book, 13. 
 
 sale of book not necessary, 14. 
 
 in specification vitiates patent, 14. 
 
 even if some diflference in working, if invention substantially 
 the same, 15. 
 
 specification not different from any other publication, 16. 
 
 if provisional specification abandoned, and another filed within 
 six months, no publication, 17. 
 
 amount of information given by, must be equal to that required 
 from specification, 17. 
 
 general description not sufficient, 18. 
 
 antecedent publication must enable public to use invention, 18. 
 
 where no article made, argument that publication not prac- 
 tical, 19. 
 
INDEX. 491 
 
 PUBLICATION— coMftMued 
 
 delay in publication not affect rights of patentee, 33. 
 wilful ignorance not excuse patentee, 33. 
 
 QUEENSLAND, 
 
 patent law of, 465. 
 
 REFERENCE, 
 
 to law officer, form of, 386. 
 
 REGISTER, 
 
 of patents at office, 173. 
 
 of proprietors, 240. 
 
 dealings with patent entered thereon, 240. 
 
 certified copies of evidence, 240. 
 
 registration relates back to day of assignment, 240. 
 
 fraudulent entry on, is misdemeanour, 240. 
 
 expunging entries, 241. 
 
 Court not decide questions of right and title, 241. 
 
 joint grantees niay not prejudice each other's rights by entries 
 
 on, 241. 
 no appeal from order of Master of Rolls expunging entry, 242. 
 certified copies of entries sent to Edinburgh and Dublin, 242. 
 
 REPLICATION. See Suit in Equity. 
 
 REVOKING, 
 
 order for extension, 182. 
 
 RULES, 
 
 under Patent Acts, 406. 
 
 of practice before law officer, 415. 
 
 of practice before Privy Council, 418. 
 
 RUSSIA, 
 
 patent law of, 445. 
 
 SALE, 
 
 of book not necessary to prove publication, 4. 
 
 of patented article is user, 25. 
 
 exposing for, user, though no sale effected, 26. 
 
 making for, is infringement, 273. See Infeingement. 
 SCIRE FACIAS. See Peoceedinos to Repeal Patent. 
 
 SCOTLAND, 
 
 transmission of letters patent to, 171. 
 
492 INDEX. 
 
 SEALING. See Method op Obtaining Lettebs Patent. 
 
 SEAS, 
 
 acts done on high seas not infringement, 272. 
 
 SEPARATE BILLS. See Suit in Equity. 
 
 SERVANT, 
 
 lonafide invention by, belongs to him, 7. 
 
 SIMULTANEOUS DISCOVERERS, 
 first patentee is inventor, 7. . 
 
 SPAIN, 
 
 patent law of, 448. 
 
 SPECIAL JURY, 
 
 certifying for, 321. 
 
 SPECIFICATION, 
 
 condition in letters patent voiding them, if not accurate, 77. 
 
 object of, 78. 
 
 must describe same invention as patent, and not attempt to 
 include matters not of patentee's own invention, 79. 
 
 must give best mode known to patentee, 80. 
 
 omission of material part of process bad, 80. 
 
 not fatal, if omission only goes to degree of benefit, 81. 
 
 unnecessary introduction of matter bad, 82. , 
 
 so if cheaper materials used, 83. 
 
 or whole class of substances named as useful, when some not, 83. 
 
 in certain cases unnecessary matter may be treated as super- 
 fluous, if public not deceived, 85. 
 
 materiality of process question for jury, 85. 
 
 not necessary to claim all useful substances, if public not 
 misled, 85. 
 
 need not explain all terms used, 86. 
 
 nor state exact proportions of a compound, 86. 
 
 improvements must be stated, 87. 
 
 and means competent to perform process, 87. 
 
 ambiguity vitiates specification, 89. 
 
 claim in specification not necessary, 91. 
 
 object of, 91. 
 
 means of effectuating invention considered as claimed, 92. 
 
INDEX. 493 
 
 SPECIFICATION— co«ft«Med. 
 
 claim for application of new material to old purposes good, 93. 
 
 general words not part of declaration, not vitiate claim, 93. 
 
 may not be more extensive than specification, 94. 
 
 parol evidence admissible to explain, 95. 
 
 general claim not include subsequent improvements, 95. 
 
 specification of patent for new mode of applying old matei-ials 
 must claim materials and mode together, 95. 
 
 claim of principle bad, 96. 
 
 specification of patent for application of old invention to new 
 materials, means must be new and must be claimed, 96. 
 
 addition or improvement, specification of patent for must be 
 for addition or improvement only, 96. 
 
 addition or improvement must be distinguished and claimed as 
 new, 100. 
 
 part of invention communicated from abroad must be distin- 
 guished, 103. 
 
 specification bad where one of distinct parts not new, 103. 
 
 one of several inventions claimed as improvements not so, 
 patent void, 104. 
 
 whole combination claimed as new, when not so, specification 
 bad, 104. 
 
 or if part claimed as new not so, 106. 
 
 patentee not presumed to claim anything well known, 107. 
 
 claim may be limited, 107. 
 
 combination need not be expressly claimed, 107. 
 
 but must only claim new parts, 107. 
 
 rules of construction are ordinary rules for interpretation of 
 written d^iments, 107. 
 
 title and specLsStion read together, 107. 
 / specification to be construed favourably to inventor, 108. 
 
 must be fair discovery, 109. 
 
 objections must be clearly made out and verbal objections dis- 
 couraged, 109. 
 J evident mistake or misuse of words not vitiate specification, 110. 
 
 nor use of scientific terms, 110. 
 
 specification to be construed according to state of knowledge 
 when drawn, 111. ly^ 
 
 construction of is duty of Court after terms of art explained by 
 jury, 112. 
 
494 INDEX. 
 
 SPECIFICATION— coraftraae^;. 
 
 terms of trade used in ordinary commercial sense, 114. 
 
 comparison of specification is for jury, 115. 
 
 unless no question to go to them, 116. 
 
 sufficiency of specification for jury, 117. 
 
 exaggerated cases to be discarded, 118. 
 
 specification may be construed with aid of plans or drawings, 118. 
 
 if experiments necessary to produce beneficial effect specifica- 
 tion bad, 120. 
 
 but not if only necessary to produce greatest beneficial efiect, 
 122. 
 
 technical words not necessary, 122. 
 
 amount of skill necessary to understand specification and make 
 machiue, 122. 
 
 specification bad if additions by workmen necessary, 123. 
 , y^ untrue statement vitiates specification even if it would not 
 deceive workman, 125. 
 y, but omission not fatal if it does not mislead, 125. 
 
 evidence of skiQed workmen as to sufficiency of specification, 
 value of, 130. 
 
 form of, 393. See Disclaimeb : Title Amendment. 
 
 STAMP DUTIES, 
 
 on disclaimers and caveats, 140. 
 on obtaining patent, 168. 
 agreement to pay, 169. 
 
 STAYING PROCEEDINGS, 
 
 pending action of scire facias, 342. 
 
 SUBJECT MATTER. See Publication Usee. 
 
 m 
 invention must be new and useful, 11. ^ 
 
 exhibition at International Exhibitions not prejudice patent 
 
 rights for six months, 32. 
 new manufacture, what is, 33. 
 things made, 33. 
 practice of making, 34. 
 
 either machine or mode of constructing it, 34. 
 amount of invention immaterial, 34. 
 mode or process of manufacturing apart from things produced 
 
 good subject matter, 36. See Peocess. 
 meaning of words, mode or method, 40. 
 
INDEX. 495 
 
 SUBJECT MATTER— continued. 
 
 no patent granted for principle only, 41. See Pbinciple. 
 additions to and improvements on existing machines or patents 
 
 good, 50. See Addition and Improvement. 
 combination may be patented, 54. See Combination. 
 use of old machine in o^d manner cannot be patented, 61. 
 nor application of known machine to new materials, 62. 
 mere improvement in existing process not subject of patent, 63. 
 must be some invention, 64. 
 or discovery, 65. 
 change in order of process, 66. 
 adaptation of known substance to new purpose, 67. 
 omission of part of process, 67. 
 new use of old materials, 68. 
 
 process making chemical curiosity available for practical pur- 
 poses, 68. 
 may be several patents with same object, mode being different, 71 . 
 invention must be complete in itself, 71. 
 question of novelty is for the jury, 72. 
 utility requisite, 73. See Utility. 
 
 SUBSTITUTED SERVICE, 
 
 of petition for extension, 162. 
 
 SUIT IN EQUITY, 
 
 jurisdiction of Court, 303. 
 
 injunction not granted if validity of patent cannot be supported 
 
 at law, 303. 
 may be granted though title not ascertained by trial, 303. 
 possession under colour of title, 304. 
 course of procedure on application for injunction, 304. 
 not granted before title ascertained, if injury to defendant great, 
 
 305. 
 granted where uninterrupted enjoyment, 306. 
 grounds of national policy, 307. 
 after verdict almost of course, 308. 
 terms when imposed, 309. 
 plaintiff assignee, 309. 
 infringement must be shown, 309. 
 length of enjoyment considered, 310. 
 manufacture abroad, 310. 
 
496 INDEX. 
 
 SUIT IN -EQXIITY— continued. 
 final order, 310. 
 
 interfering patents, remedy by scire facias, 310. 
 admission by defendant, 311. 
 
 injunction may be granted though patent recent, 312. 
 not granted where trial ordered, 3^2. 
 award by arbitrator equivalent to verdict, 312. 
 injunction at hearing, 313. 
 
 not made perpetual till validity of patent established, 313. 
 delay and acquiescence bar, 313. 
 patent expired, injunction when granted, 315. 
 misrepresentation of machine, 316. 
 trial of questions of law or fact, 316. 
 issues when directed at assizes, 317. 
 may be granted before hearing of the cause, 318. 
 separate issues, 318. 
 iiddition of new issue, 318. 
 forms of issues, 318. 
 evidence on trial of, 319. 
 / x''"^ right to a jury, 319. 
 
 -^ new trial, motion for, 321. 
 
 particulars of breaches and objections, 322. 
 
 principle of, 322. 
 
 objections not required where replication filed, and Court has 
 
 refused to direct issues, 323. 
 novelty denied by answer, defendant not entitled to particulars of 
 
 user, 323. 
 form of order for delivery of particulars, 324. 
 evidence must be contained in particulai-s, 324. 
 may be amended on short notice, 324. 
 specification need not be set out in bill, 324. 
 need not be express averment of novelty, 325. 
 double plea, 325. 
 assignee may maintain suit, 325. 
 directors of company may be defendants, 325. 
 consolidation of suits where many infi-ingers, 326. 
 affidavits, plaintifi" must swear as to belief that he is original 
 
 inventor, 327. 
 motion may be ordered to stand over to allow affidavit to be 
 
 made, 327. 
 
INDEX. 497 
 
 SUIT IN EQUITY— coKftMMetf. 
 
 affidavit must state infringement, 328. 
 
 what plaintiff must prove, 328. 
 
 variation between allegations in bill and affidavits, 328. 
 
 interrogatories ; defendant must answer fully, 328. 
 
 what may be asked in, 329. 
 
 separate bills, plaintiff entitled to separate answers, 330. 
 
 taking bill joro confesso, 330. 
 
 account may be granted, 330. 
 
 even though defendant has submitted, 331. 
 
 joint grantees not liable to account to each other, 331. 
 
 account against agent, 331. 
 
 account not decreed where Court cannot give complete relief, 
 
 331. 
 term over which it extends, 331. 
 must be no delay in applying for, 331. 
 form of order for, 331. 
 damages may be given, 332. 
 but not where account, 332. 
 form of inquii-y as to, 332. 
 remedy against both manufacturer and user of patented articles, 
 
 332. 
 damages may be awarded though patent expired, 333. 
 inspection, when ordered, 335. 
 not matter of right, 335. 
 of provisional specification not ordered, 335. 
 form of order for, 336. 
 samples for analysis, 336. 
 destruction of goods, 337. 
 marking parts of combination, 337. 
 certificate that validity of patent has come in question may bo 
 
 given, 337. 
 costs of motion, rules as to, 337. 
 of suit where defendant submits, 338. 
 as between solicitor and client, 338. 
 
 TASMANIA, 
 
 patent law of, 465. 
 
 TAXATION, 
 
 certificate not given after, 298. 
 K K 
 
498 INDEX. 
 
 ■ TENANTS IN COMMON, 
 
 patent vested in trustees for, 232. 
 right to sue descends to survivor, 287. 
 
 TERM, 
 
 of letters patent, 2. 
 
 TERMS, 
 
 of tx-ade how interpreted, 114. 
 
 may be imposed on grant of patent, 8, 162. 
 
 on extension, 211. 
 
 on grant of injunction, 309. 
 
 staying proceedings in scire facias on, 342. 
 
 TIME, 
 
 loss of may be deducted in accounts on extension, 207. 
 
 TITLE, 
 
 part may be disclaimed, 131. 
 
 must be distinct, 143. 
 
 and give some and a true idea of invention, 144. 
 
 amendment of, 149. 
 
 TRANSCRIPT, 
 
 of letters patent forwai-ded to Scotland and Ireland, 171. 
 
 TRINIDAD, 
 
 patent law of, 466. 
 
 TRUE AND FIRST INVENTOR. 
 See Geantee op Lettees Patent. 
 
 TRUSTEES, 
 
 of company may petition for extension, 186. 
 
 USE, 
 
 of similar article evidence of infringement, 283. 
 USER, 
 
 of an invention vitiates patent, 19. 
 
 though not known to patentee, 19. 
 
 must be public, 19. 
 
 need not come down to date of patent, 20. 
 
 must be distinguished from experiments, 21. 
 
 invention kept secret no user, 21. 
 
 some steps must be taken to make it known, 21. 
 
 accidental nser or combination, 23. 
 
INDEX. 499 
 
 User — continued. 
 
 user in ignorance, 24. 
 
 for private purposes, 24. 
 
 manufacture by patentee before patent not user, 24. 
 
 unless sale, 25. 
 
 but manufacture by other persons is, 25. 
 
 exposing for sale though no sale is effected is, 26. 
 
 experiments by inventor before patent not, if secret, 26. 
 
 unless disclosure unavoidable, 27. 
 
 unsuccessful experiments by previous inventor, 28. 
 
 former article must have had same properties as that claimed 
 
 by patentee, 31. 
 test of user, 32. 
 
 exhibition at International Exhibitions not, 32. 
 in foreign ships, 165. 
 
 UTILITY, 
 
 necessary, 4, 73. 
 
 combination of known articles in new manner must be of, 54. 
 
 is condition imposed by common law, 73. 
 
 compendious mode of deciding whether patent void or not, 74. 
 
 amount of not considered, 74. 
 
 question of is for jm-y, 76. 
 
 sufficient if on any occasion invention useful, 76. 
 
 is ground for extension, 199. See Extension of Teem. 
 
 VARIANCE, 
 
 between provisional and complete specification, 151. See 
 Method of Obtaining Patent. 
 
 VICTORIA, 
 
 patent law of, 466. 
 
 WAIVER, 
 
 by licensor of right to forfeit licence, 239. 
 
 "WAR, 
 
 munitions of, 157. 
 
 WARRANT, 
 
 for sealing, 155. 
 form of, 387. 
 
 WILFUL IGNORANCE, 
 
 of previous publication, 33. 
 
500 
 
 INDEX. 
 
 WORKMEN, 
 
 See Spdcimcatiow, 
 
 acts done by may be infringement, 277. 
 
 WURTEMBERG, 
 
 patent law of, 451. 
 
 ZOLLVEREm, 
 
 patent law of, 453. 
 
 CHISWICK PRESS : — PRINTED BY WHITTINGHAM AND WILKINS, 
 TOOXS COURT, CHANCERY LANE.