London Papers, and three times in some Country Paper published in the town where or near to which he carried on any manufacture of anything made according to his Specification, or near to or in which he resides in case he carried 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 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 Caveat at the Council Office; and if His Majesty shall refer the consideration of such Petition to the Judicial Committee of the Privy Council, and notice shall first be by him given to any Person or Persons who shall have entered such Caveats, the Petitioner shall be heard by his Counsel and Witnesses to prove his Case, and the Persons entering Caveats shall likewise be heard by their Counsel and Witnesses; whereupon, and upon hearing and inquiring of the whole Matter, the Judicial Committee may report to His Majesty that a further Extension of the Term in the said Letters Patent should be granted not exceeding Seven Years; and His Majesty is hereby authorised and empowered, if He shall think fit, to grant new Letters Patent for the said Invention for a Term not exceeding Seven Years after the expiration of the first Term, any Law, Custom, or Usage to the contrary in 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The last proviso was repealed by 2 & 3 Vic. ch. 67, and the remainder of the section was repealed as mentioned above.

The Petitioner.

(d) In re WRIGHT'S PATENT, Ex parte SHUTTLEWORTH. [1837]

Extension recommended in favour of the parties having the legal estate, without imposing any conditions with reference to the equitable claim of other parties connected with the patentee. (1 Web. P. C. 561.)

In an application for extension by an assignee, the title of the petitioner must be strictly proved, although no notice of intention to dispute the title is contained in the objections. (Ib.)

(e) In re SOUTHWORTH'S PATENT. [1837]

The new letters patent must be granted to the party in whom the subsisting patent is legally vested. (1 Web. P. C. 487.)

(f) In re DOWNTON'S PATENT. [1839] In re HEATH'S PATENT. [1853]

An extension of a patent may be granted to the administratrix of the patentee. (1 Web. P. C. 565; 8 Moo. P. C. C. 217.)

(g) In re MORGAN'S PATENT. [1843]

Lord Brougham, in delivering judgment, said: "When applications are made to their Lordships for the extension of a patent term, that is to say, of a monopoly, under letters patent by assignees, to whom the interest of the patentee has been parted with, and in whom it is vested, their Lordships have always been used to consider, that by taking into their view and favourably listening to the application of the assignee, they are, though not directly, yet mediately and consequentially, as it were, giving a benefit to the inventor, because, if the assignee is not remunerated

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 interest in the patent." (1 Web. P. C. 737.)

(h) In re GALLOWAY'S PATENT. [1843]

In an application by an assignee, his title must be strictly proved. (1 Web. P. C. 725.)

(i) RUSSELL v. LEDSAM. [1845]

The power of the Crown to extend letters patent is not confined to grantees, but extends to assignees, and such renewed letters patent, granted to the assignee, are good by the statute 5 & 6 Will. 4, c. 83, independently of the 7 & 8 Vict. c. 69. (14 M & W. 574; judgment affirmed in Exch. Ch., 16 M & W. 633; and in H. of L., 1 H. L. Cas. 687.)

(j) In re HARDY'S PATENT. [1849]

Extension of a patent granted to an assignee upon certain conditions. (See p. 137 (w).) (6 Moo. P. C. C. 441; 13 Jur. 177.)

(k) In re BODMER'S PATENT. [1849]

The extension of a patent may be granted, on petition, to the executor of the surviving assignee for valuable consideration of a patentee. (6 Moo. P. C. C. 469.)

(1) In re BERRY'S PATENT. [1850]

Extension of letters patent granted for six years, where the invention was of considerable commercial value, and the importers had embarked a large capital upon machinery in trying to introduce it to general use, and incurred considerable loss in so doing. (7 Moo. P. C. C. 187.)

The importer of an invention by the outlay of his capital benefits the public in the proportion of the value of the invention imported, and importation, therefore, is to be considered as a solid claim to the exercise of the power of extension. (lb. 189.)

(m) In re PETTIT SMITH'S PATENT. [1850]

The person who has the legal estate in letters patent has the prior right to petition for an extension. In the present case the new letters patent were granted to the trustees of a joint-stock company, although the patentee joined in the petition. (7 Moo. P. C. C. 133.)

(n) In re NOBLE'S PATENT. [1850]

An equitable assignee is entitled to appear with the legal assignees of a patent, on a petition for a prolongation of the letters patent, if the name of such equitable assignee appears, with the other petitioners, in the advertisements required by sect. 4 of the statute 5 & 6 Will. 4, c. 83, and Rule 2, made in pursuance thereof. (7 Moo. P. C. C. 191.)

(0) In re Cook & WHEATSTONE'S PATENT. [1851]

Semble, a company may obtain a renewal of letters patent. Extension was in this case refused on the grounds of sufficient remuneration; Lord Langdale, however, said: "If the company's speculation had been clearly made out to be a losing concern, it would perhaps have been matter for consideration whether there was not good ground for renewal." (38 Lond. Jour. 223.) See Deacon's Patent, p. 127 (g).

(p) In re CLARIDGE'S PATENT. [1851]

The importer of an invention from abroad is an inventor within the meaning of the statute 5 & 6 Will. 4, c. 83, and entitled to apply for an extension of the term. But the Judicial Committee will look with jealousy into the merits of the invention imported.

Application for an extension by the trustees of a joint-stock company (the assignees of the patentee) refused; the invention imported having been in common use in France, and no great risk or expenditure incurred by the patentee or his assignees in introducing it to the public. (7 Moo. P. C. C. 394.)

Jervis, C. J., objected to the prolongation on the ground that the rule in granting letters patent is to limit the number of grantees to twelve. (Ib. 395.)

An alien, resident abroad, who was interested in an English patent by a foreign inventor, and who had also considerable dealings in this country in respect of sales of the patented machine and in granting licenses for the use of such patent, held, in the circumstances, to have such a locus standi as to entitle him to petition the Crown to revoke an order in council for granting an extended term of an English patent, and to recall the warrant for sealing such patent. (9 Moo. P. C. C. 1.)

(r) In re NAPIER'S PATENT. [1861]

The Judicial Committee had power, under statute 7 & 8 Vict. c. 69, s. 4, to grant an extension of the term of letters patent to the assignee of the patentee (in this case a public company), when the patentee has ceased to have any connection with the working of the patent. (13 Moo. P. C. C. 543; 9 W. R. 390.)

(8) In re NEWTON'S PATENT. [1861]

Extension granted to a petitioner who had obtained the letters patent as agent and trustee for a foreign invention. P. C. C. 156.)

(t) In re BOVILL'S PATENT. [1863]

(14 Moo.

The patentee had been involved in debt arising from extensive litigation in defending his patent rights, and had, moreover,

mortgaged his letters patent, and entered into a deed of arrangement or inspectorship under the Bankruptcy Act with his creditors. The petition was presented by the patentee, and certain mortgagees and others claiming liens on the letters patent. In the circumstances, their Lordships granted the extension of the patent to the patentee alone. (1 Moo. P. C. C., N. S., 348.)

(u) In re NORTON'S PATENT. [1863]

Petition by assignee of patentee, who was dead, for prolongation of letters patent, dismissed by reason, (1) that the assignee had never taken any effectual steps to apply the invention to a useful and beneficial purpose; and (2) as the application for extension, though by the assignee, was in reality on behalf of a joint-stock company, who purchased the letters patent for the purpose of trading with it, and with others founded upon it, and not for any purpose by means of which any benefit can be derived by the original inventor. (1 Moo. P. C. C., N. S., 339.)

The Master of the Rolls, in delivering judgment, said: "Under the late statute, 7 & 8 Vict. c. 69, s. 4, a person is not excluded from applying for an extension of a patent upon the ground of his being the assignee of the patent; but it must always be borne in mind that the assignee of a patent does not, unless under peculiar circumstances, apply on the same favourable footing that the original inventor does. The ground that the merits of the inventor ought to be properly rewarded, in dealing with an invention which has proved useful and beneficial to the public, does not exist in the case of an assignee, unless the assignee be a person who has assisted the patentee with funds to enable him to perfect and bring out his invention, and has thus enabled him to bring it into use." (Ib. 344.)

(v) In re NORMAND'S PATENT. [1870]

An assignee of the patentee, who had taken an assignment of four-fifths of the patent within a few months of the expiration of a patent, which had only just been brought into use, for a small consideration, was not entitled to any extension. (6 Moo. P. C. C., N. S., 477.)

(w) In re PITMAN'S PATENT. [1871]

Sir J. W. Colvile, in delivering judgment, said: "There are, no doubt, cases in which their Lordships have granted applications by the assignees of the patentee for extension of the term, and have also considered, in some respects, the expenses incurred by the assignee in bringing the patent into notice, and for the merit, as it may be said, of the assignee in patronizing the patentee, and in pushing the patent into notice; but the general rule which their Lordships entertain in applications on the part of assignees, is, as was stated by Lord Brougham in Morgan's Patent." (8 Moo. P. C. C., N. S., 297.)

(x) In re BRANDON'S PATENT. [1884]

The provisions of the Patents Act of 1883 do not affect any patent granted before the commencement of the Act, nor any right or privilege which had accrued to the patentee before or at the commencement of the Act, including the privilege of applying for a renewal. (9 App. C. 589; 53 L. J. P. C. 84; 1 0. R. 154; Griff. 255.)

(y) CHURCH'S PATENT. [1886]

Objection being taken that the mortgagee of the patent was not a petitioner:-Held, that the mortgagee as legal owner ought to have been a party, but that the irregularity was not so serious as to be fatal at the further hearing, since if it had been discovered before the hearing it might have been set right. (Griff. 256; 3 O. R. 95.)

(2) WILLACY'S PATENT. [1888]

The petition having been presented by the son of the patentee who had acquired an interest in the patent from L. who had worked the patent under a verbal agreement with the patentee up to his death:-Held, that the personal representative of the patentee and L. ought to be made parties. (5 O. R. 690.)

The Petition.

(a) In re HUTCHINSON'S PATENT. [1861]

Material facts, showing the title of the petitioner, were disclosed in evidence, which were omitted to be stated in the petition for prolongation. In such circumstances the hearing was postponed, and the petition directed to be amended by stating those facts. (14 Moo. P. C. C. 364.)

(b) In re PITMAN'S PATENT. [1871]

As the recommendation to the Crown for the prolongation of the term of letters patent is a matter of discretion in the Judicial Committee, it is imperatively necessary that the petition for such prolongation should state fairly and fully everything relating to the patent: an omission to do so is fatal to the application.

Where the petition omitted to state that the patent was, in fact, a communication from a foreigner living abroad, who had previously to the English patent patented the same invention in America, and that the American patent had expired, though afterwards renewed in America, the Judicial Committee, in the circumstances, refused the application. (8 Moo. P. C. C., N. S., 393.)

(c) In re JOHNSON'S PATENT. [1871]

A clear statement should be made, in the petition, of every matter applicable to the patent, the term of which it is desired should be extended. (L. R., 4 P. C. 83.)