by a description in a work which has been publicly circulated, or Chap. XIV. in a specification (post, p. 231) duly inrolled, unless the specification was deposited more than 50 years before or was "provisional" only, it avoids the patent, though it is not shown that it ever was actually put into use.2 There must be either some prior use in this country, or some prior publication in this country of an intelligible description of the invention which has become known here; and the onus is on the patentee to show that a prior publication did not become so known; for no evidence is necessary to show that the publication was in fact read or referred to; but, if proof is given that it was not sold or circulated, the publication would not be fatal to the patent. Moreover, the information as to the alleged invention given by the prior publication must be equal to that given by the subsequent patent; it must be "such that a person of ordinary knowledge of the subject (i.e., an expert) would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful." 6 To be the subject of a valid patent an invention must be not Utility. only novel but useful, though the Statute of Monopolies does not mention utility. But it is not necessary to show that the invention will be commercially successful;7 and a small amount of utility is sufficient to support a patent." "Utility" in this connection does not mean abstract utility, but an invention better than the preceding knowledge of the trade as to a particular fabric."9 66 An invention is useful by which an article, good though not so 12 Ed. VII., c. 34, s. 1. See post, p. 233. 2 Per Lord Blackburn, 3 App. Cas. 244, 245, and per Blackburn, J., Betts v. Menzies, 10 H. L. C. 142. But the antecedent specification must disclose a practicable mode of producing the result which is the effect of the subsequent discovery; per Lord Westbury, C., Betts v. Menzies, 10 H. L. C. 154. 3 Per Cotton and Lindley, L.JJ., Harris v. Rothwell, 35 Ch. D. 427. See as to what extent of knowledge is sufficient, per Jessel, M.R., Plimpton v. Malcolmson, 3 Ch. D. 556. Per Cotton and Lindley, L.JJ., Harris v. Rothwell, 35 Ch. D. 428. The publication may be in a foreign language ; 6 Per Lord Westbury, C., Hill v. 7 Per Lord Halsbury, C., Badische Per Grove, J., Young v. Rosenthal, Chap. XIV. good as one of the same kind previously known, can be produced more cheaply by a different process.1 Patents, &c. Definitions of "Patent "66 patentee "inven tion." Who may apply for patent. Joint patentees. Application. The grant and protection of a patent are now regulated by the Patents, Designs and Trade Marks Act, 1883, which was passed to amend and consolidate the law relating to patents for inventions; by the general rules of the Board of Trade thereunder; and by the amending Acts of 1885, 1886, 1888, 1901 and 1902. These Acts, subject to certain special provisions, apply also to Scotland and Ireland, and to the Isle of Man." 5 66 In the above Acts, "patent" means letters patent for an invention; "patentee" means the person for the time being entitled to the patent; and "invention" means 'any manner of new manufacture the subject of letters patent and grant of privilege within s. 6 of the Statute of Monopolies " (supra, p. 225), "and includes an alleged invention."7 The Acts are not to take away, abridge, or prejudicially affect, the prerogative of the Crown in relation to the granting of letters patent or withholding a grant.8 Any person (which includes a body corporate), whether a British subject or not, may apply for a patent; 10 and two or more persons may apply and a patent be granted to them jointly, although some or one only be the true inventors or inventor." Formerly they must have been joint inventors. There is no implied contract that no one of the co-patentees shall use the invention without the consent of the others, or, if he does, that he shall use it for their joint benefit.12 If the inventor dies without applying for a patent, application may (within six months from his death) be made by, and a patent granted to, his "legal representative." "13 The application must be in the prescribed form, and must be 1 Welsbach Co. v. New Incandescent Co., [1900] 1 Ch. 843. 2 46 & 47 Vict. c. 57. The earlier 3 46 & 47 Vict. c. 57, s. 101. 5 Act of 1883, ss. 107-111. 6 S. 112. See 7 S. 46. 8 S. 116. 9 S. 117. 10 S. 4 (1). 11 S. 4 (2); and Act of 1885, s. 5. 12 Mathers v. Green, 1 Ch. 29; Goodeve's P. C. 298. See Hancock v. Bewley, Johns. 601; Steers v. Rogers, [1892] 2 Ch. 13. 13 Act of 1883, s. 34. Before this Act the legal personal representative could not take out a patent; Marsden v. Saville Co., 3 Ex. D. 203. left at, or sent by post to, the Patent Office. It must contain a Chap. XIV. declaration to the effect that the applicant, or in a joint application one or more of the applicants, claims or claim to be the true and first inventor or inventors.3 The Act does not attempt to define who is "the true and first inventor"; to ascertain the meaning of the expression, recourse must still be had to the numerous decisions upon the Statute of Monopolies.* "True and first inven tor." at exhibitions. The exhibition of an invention at, or the publication of a Publication. description during, certain exhibitions do not prejudice the right of the inventor to apply for a patent, provided that he has given the proper notice of his intention to exhibit, and applies for a patent within six months of the opening of the exhibition. By Order in Council this protection may be extended to exhibitions abroad, and the exhibitor be relieved from the condition ast to notice. It is part of the consideration for the grant of a patent that Specification. the patentee shall secure to the public the benefit of his discovery, so that at the expiration of the patent others may be able to work or make the manufacture of which the patentee was the inventor.7 The patentee has, therefore, ever since the time of Queen Anne,8 been required to furnish a description-called a "specification"— of the thing to be done and the manner of doing it, in such a way as to enable skilled persons to adopt the invention and make the manufacture. The object of requiring a specification is to enable persons of reasonable intelligence and skill in the subject-matter to tell from the inspection of the specification itself what the invention was for which the patent was granted. The specification must be such as, if fairly followed by a competent workman without invention or addition, would produce the thing for which the patent is taken out.10 It is supposed to be addressed to a 1 Ib. ss. 5 (1), and as to the Patent Office, s. 82 (1). The declaration may be a statutory declaration under 5 & 6 Will. 4, c. 62, or not, as may be from time to time prescribed; Act of 1885, s. 2. 3 Act of 1883, ss. 5 (2), 99; Act of 1885, s. 2. 21 Jac. 1, c. 3. ante, p. 225. 5 Act of 1883, s. 39. 6 Act of 1886, s. 3. 7 Hornblower v. Boulton, 8 T. R. 100, 103; 3 R. R. 439. 8 Per Lord Blackburn, Bailey V. Roberton, 3 App. Cas. 1074. 9 Foxwell v. Bostock, 4 De G. J. & S. 312, per Lord Westbury, C. 10 Per Parke, B., Neilson v. Harford, 1 Webs. P. C. 66, n. Chap. XIV. practical workman who brings the ordinary degree of knowledge and capacity to the subject.1 Provisional specifica tions. Since the Act of 18522 it has been the practice to furnish two and complete specifications, first, a preliminary or "provisional" specification, which describes the nature of the invention, with the object of protecting an inventor until the filing of a second specification, called the "final" or "complete" specification, which must not only describe the nature of the invention, but must also show "in what manner it is to be performed." Disconformity. Specification under the Act of 1883. "3 "The object of requiring the patentee to state" (by the provisional specification) "the nature of his invention is to let the public know what is the prohibited ground, and what they are not to do, what the patentee has got his grant for, which gives him a monopoly for fourteen years. The object of requiring the patentee to describe" (by the complete specification)" the manner of carrying the invention into practical effect is to prevent the patentees from keeping to themselves the means of performing their inventions, so that after the monopoly for fourteen years they could still use the thing, keeping secret the mode in which they did it."4 It is an essential condition of a good patent that the provisional specification should describe the true nature of the invention, and that the invention there described should be the same as that claimed in the complete specification; and noncompliance with this condition is a defence to an action for infringement, and is a ground for revocation of the patent. The Act of 1883, therefore, requires that an application for a patent shall be accompanied by a "specification," which may be either "provisional" or "complete." A provisional specification must describe the nature of the invention, and be accompanied by drawings if required; a complete specification must particularly describe and ascertain the nature of the invention, and in what 1 Per Parke, B., Neilson v. Harford, 1 Webs. P. C. 314. See per Jessel, M. R., Plimpton v. Malcolmson, 3 Ch. D. 568, 569 Badische Anilin v. Levinstein, 12 App. Cas. 710; Lane-Fox v. Kensington C., [1892] 3 Ch. 424. 2 15 & 16 Vict. c. 83. 3 Stoner v. Todd, 4 Ch. D. 58, per Jessel, M.R. See, as to the difference between provisional and complete speci fications, the authorities cited by Fry, J., in United Telephone Co. v. Harrison, 21 Ch. D. 743 et seq. ; Siddell v. Vickers, 39 Ch. D. 92; 15 App. Cas. 496. Per Grove, J., Philpott v. Hanbury, 2 R. P. C. 38. 5 Vickers v. Siddell, 15 App. Cas. 496; Nuttall v. Hargreaves, [1892] 1 Ch. 23. 6 Act of 1883, s. 5 (2). 7 S. 5 (3). 4 manner it is to be performed, and must be accompanied by Chap. XIV. drawings, if required, or refer to those which accompanied the provisional specification.1 Every specification must commence with the title of the invention, and a complete specification must end with a distinct statement of the invention claimed; but this provision is directory only, and non-compliance with it does not invalidate the patent. The complete specification, if not left with the application, may be left at any time within six months, or, with leave, within a further period of one month," from the date of application; and unless it is left within that time, the application is deemed to be abandoned. Formerly the specification was completed subsequently to the grant of the patent. It has been provided that, when an application has been abandoned, no specification or drawings shall be open to public inspection or be published by the Comptroller.7 examiner The officer under whose immediate control the Patent Office Comptrolleris placed is called the "Comptroller-General of Patents, Designs, aw officer. and Trade Marks," and he acts under the superintendence and direction of the Board of Trade, by whom he is appointed. He is to refer every application to an examiner, who is also an officer appointed by the Board of Trade, whose duty it is to ascertain and report to the Comptroller whether the nature of the invention has been fairly described, and the application, specification, and drawings (if any) have been prepared in the prescribed manner, and the title sufficiently indicates the subject-matter of the invention,10 and whether the invention has been wholly or in part claimed or described in any complete specification already published and deposited within fifty years before the date of the application; 11 upon the report of the examiner the Comptroller may, after opportunity to the applicant of being heard, 12 refuse to accept the application or require the application, specification, or drawings to be amended, subject to an appeal to the law officer, 13 that is, the Attorney-General or Solicitor-General.11 Where a complete specification is left, after a provisional Complete specification. |