WIGHTMAN, J. The plea does not follow the words of the sixth section of the statute of James, which makes a reservation in favor of letters patent heretofore made, of the sole working or making of any manner of new manufacture within this realm.

Petersdorff, in reply. The question how far an assignee who had been grantee may disclaim does not arise, because in this case the disclaimer was by the grantee. There is nothing in the act to intimate that a party entering a disclaimer should have any present interest. The plea is uncertain. It would be difficult in advising on evidence to say what defence the plaintiff must be prepared to meet.

Lord DENMAN, C. J. The first question is whether the declaration is good. The disclaimer is stated to be by the grantee of the letters patent at a time when he had not the entire interest in them. I think he falls within the description given in the statute of the person who may enter a disclaimer, and that the declaration is good. Any inconvenience which might arise from such a power may be obviated by the exercise of the discretion conferred upon the Attorney and Solicitor-General, who will, before they grant leave for that purpose, take cognizance of the name in which permission is given.

The second question is on the goodness of the fourth plea. Suppose the words of the statute had been followed; then, I think, it would have fallen within the rule which allows of a complicated proposition being pleaded though consisting of several facts. But the words of the statute are not followed, which are, "the sole working or making of any manner of new manufactures within this realm;" and therefore, being used in the ordinary sense, it is left doubtful whether the objection is that the invention is not new, or that it is not a manufacture within the statute (21 Jac. I., c. 3). That is clearly not a complicated proposition, but two propositions; and therefore the plea is bad.

PATTESON, J. I cannot read the first section of Stat. 5 and 6 Will. IV., c. 83, without being convinced that the word "obtain" refers to the act of applying for and obtain

ing from the Crown a grant of letters patent, though at the same time I do not understand the words "assignee or otherwise." It is indeed argued that the word "obtain" may mean "get into his possession," through any other channel; but looking to the second section we find the same word, and there it is clear that it has the meaning which I attach to it; for it mentions any person who shall have obtained letters patent for any invention being found to be not the first inventor thereof, and gives power to him or his assigns to petition the Crown. And I do not see why the same sense should not be attributed to it in the first which it obviously has in the second section. Therefore, if the grantee has entirely parted with his interest, I think he would be a proper person to enter a disclaimer, if the Attorney or Solicitor-General, whose permission is made necessary, should think proper to allow it. But this declaration shows that the original grantee had reconveyed to him two thirds of the interest in the patent, whether collusively or not is not now a question.

As to the fourth plea, I thought at first that it contained one connected proposition, but the words "within this realm" apply to the working or making of the manufacture; and the words of the statute are not strictly pursued. I think the plea is ambiguous, and that the plaintiff might be put in a difficulty how to meet it.

COLERIDGE, J. I am of opinion that the declaration is good. The words of the statute extend to what has been done in this case; and the disclaimer has been made by the party who has obtained it within the meaning of the statute. The words "assignee or otherwise" may be reconciled with our construction, "that the person who has obtained" means the original grantee, for the words "assignee or otherwise" may apply to a foreign invention, of which a party in this country may become the assignee, and be the first to obtain an English patent for it. The inconvenience which would result from allowing a person who has parted with his right to enter a disclaimer without any restriction is obviated by the provisions with respect to the caveat and by the control to which it is subjected of the officers of the Crown.

The fourth plea is substantially defective; a person asked to advise upon the evidence to rebut it would be in doubt as to the point to which it should be directed.

WIGHTMAN, J. It is only by a forced construction that the word "obtain" could be construed to apply to any other person than the person to whom originally the letters were granted by the Crown. The argument ab inconvenienti is answered by a reference to the provisos in the first section.

If the fourth plea had omitted the words "within this realm," it might have been good; but as it stands, it applies those words to the invention, whereas the act applies them to the working or making.

Judgment for the plaintiff.

ASSIGNMENT.-Act of Parliament authorizing assignment is of a private nature, the only effect of declaring it public being to make it subject to judicial notice. Hesse v. Stevenson, 1 ante, 121. Effect of assignment by patentee in bankruptcy. Bloxam v. Elsee, 1 ante, 376. Construction as to transfer of title in assignment of patent right. Cartwright &. Amatt, 1 ante, 110.

DISCLAIMER.-Under Stat. 5 and 6 Will. IV., c. 83, patentee may disclaim part of his invention after verdict adverse to validity of patent, and thus preserve new and useful parts of invention. Morgan v. Seaward, 2 ante, 419. Where patent is originally voidable under statute, by filing disclaimer of part of invention, the act has not a retrospective operation so as to make a party liable for an infringement of the patent committed prior to time of entering such disclaimer. Perry v. Skinner, 2 ante, 454.

QUEEN v. WALTON.

Queen's Bench, Hil. V., Feb. 5, 1842.

(2 Q. B., Ad. & E., 969.)

Scire Facias to repeal Patent. Bill of Particulars.

On scire facias to repeal a patent, the prosecutor having, while the record was in Chancery, filed notice of objections, under statute 5 and 6 Will. IV., c. 83, s. 5, namely, that other persons than the patentee had used the invention

in England before grant of the patent, the Court of Queen's Bench refused, on motion after proceedings were brought therein, to order delivery of a particular stating the names and addresses of such persons.

Rule to show cause why a prosecutor in a scire facias to repeal a patent should not deliver particulars.

James Walton having obtained a patent for improvements in cards for carding wool, cotton, silk, etc., which patent is described in Walton v. Potter, p. 162, proceedings in scire facias were instituted in the Petty Bag Office of the Court of Chancery for a repeal of such patent. The scire facias and declaration stated that the supposed invention was not a new invention as to the public use thereof in England, and that, before the letters patent were granted to defendant, part of the invention had been used by others in England. The prosecutor also filed a notice of the objections, pursuant to statute 5 and 6 Will. IV., c. 83, s. 5, stating that before the granting of defendant's patent, a patent comprehending part of the invention claimed by him had been granted to one Thomas Hancock. (For Hancock's patent see Walton v. Potter above.) Neither the declaration nor the objections specified the name of any person supposed to have used such part of the invention. The defendant applied to the Master of Rolls for an order upon the prosecutors to deliver a particular of such names, but the order was refused. The record was brought into this court.

Kelly obtained a rule calling on the prosecutor to show cause "why he should not deliver to the attorney or agent for the defendant a statement in writing containing the names and places of abode of the persons whom he intends, upon the trial of this cause, to prove have manufactured or used the invention for which the letters patent in the pleadings in this cause mentioned were granted to the defendant; or why, in default thereof, the said prosecutor should not be precluded from giving evidence of such prior manufacture or use." He moved on affidavit stating the above facts, and that the defendant had no other means of gaining the information required, and was in danger of being

taken by surprise at the trial, unless the particulars were ordered.

He urged the

Follett, Solicitor-General, showed cause. refusal of the Master of the Rolls, and contended that the prosecutor had, in his notice filed in Chancery, given the information required by the statute by stating the nature of his objection, and was not bound, in addition, to furnish

names.

Kelly and Addison stated that similar rules had been granted by the Court of Common Pleas in former patent

cases.

Lord DENMAN, C. J. On the application of Mr. Kelly for a particular in this case, we agree with the Master of the Rolls rather than with the Court of Common Pleas, and think that the particular should not be ordered.

Rule discharged.

The trial of the scire facias is reported, post, Trin. V., 1842.

BROWN v. ANNANDALE.

House of Lords, Feb. 25, 1842.

(1 Web. P. C. 433.)

Prior Public Use. Invention Patented for Scotland.

The public use of an invention in England, prior to the date of letters patent for Scotland, will invalidate such letters patent.

It seems that the use of an invention in any of the colonies abroad would invalidate subsequent letters patent for England.

Appeal from the Court of Session of Scotland.

The appellant had obtained letters patent under the seal appointed by the Treaty of Union to be used in place of the great seal of Scotland, on a warrant under the sign manual, dated at St. James', January 26, 1836, and written to the seal registered and sealed at Edinburgh, February 4, 1836,