(2.) Where the comptroller refuses to accept an application or requires an amendment, the applicant may appeal from his decision to the law officer.

(3.) The law officer shall, if required, hear the applicant and the comptroller, and may make an order determining whether, and subject to what conditions (if any) the application shall be accepted.

[For sub-sects. (4) (5), see p. 35.]

By Patents Act, 1883, sect. 9, (1) amended by Patents Act, 1885, sects. 3, 4. Where a complete specification is left after a provisional specification, the comptroller shall refer both specifications to an examiner for the purpose of ascertaining whether the complete specification has been prepared in the prescribed manner, and whether the invention particularly described in the complete specification is substantially the same as that which is described in the provisional specification.

(2) If the examiner reports that the conditions herein before contained have not been complied with, the comptroller may refuse to accept the complete specification unless and until the same shall have been amended to his satisfaction; but any such refusal shall be subject to appeal to the law officer.

(3.) The law officer shall, if required, hear the applicant and the comptroller, and may make an order determining whether and subject to what conditions, if any, the complete specification shall be accepted.

[For sub-sects. (4) and (5), see p. 35.]

PATENTS ACT, 1883, sect. 18, amended by 51 & 52 Vict. c. 50, sect. 5. (1.) An applicant or a patentee may, from time to time, by request in writing left at the Patent Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment and his reasons for the same.

(2.) The request and the nature of such proposed amendment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Patent Office of opposition to the amendment.

(3.) Where such notice is given the comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case subject to an appeal to the law officer.

(4.) The law officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed.

(5.) Where no notice of opposition is given, or the person so giving notice does not appear, the comptroller shall determine whether and subject to what conditions, if any, the amendment ought to be allowed.

(6.) When leave to amend is refused by the comptroller, the person making the request may appeal from his decision to the law officer.

(7.) The law officer shall, if required, hear the person making the request and the comptroller, and may make an order determining whether, and subject to what conditions, if any, the amendment ought to be allowed.

(8.) No amendment shall be allowed that would make the specification, as amended, claim an invention substantially larger than or substantially different from the invention claimed by the specification as it stood before amendment.

(9.) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall in all courts and for all purposes be deemed to form part of the specification.

(10.) The foregoing provisions of this section do not apply when and so long as any action for infringement or proceeding for revocation of a patent is pending.

19. (1.) In an action for infringement of a patent, and in a proceeding for revocation of a patent, the Court or a judge may at any time order that the patentee shall, subject to such terms as to costs and otherwise as the Court or a judge may impcse, be at liberty to apply at the Patent Office for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postponed.

20. Where an amendment by way of disclaimer, correction, or explanation, has been allowed under this Act, no damages shall be given in any action in respect of the use of the invention before the disclaimer, correction, or explanation, unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill aud knowledge.

21. Every amendment of a specification shall be advertised in the prescribed manner.

PATENT RULES, 1890, 52. A request for leave to amend a specification must be signed by the applicant or patentee, hereinafter in Rules 54, 55, and 58 called the applicant, and accompanied by a duly certified printed copy of the original specification and drawings, showing in red ink the proposed amendment, and shall be advertised by publication of the request and the nature of the proposed amendment in the official journal of the Patent Office, and in such other manner (if any) as the comptroller may in each case direct.

53. A notice of opposition to the amendment shall state the ground or grounds on which the person giving such notice (hereinafter called the opponent) intends to oppose the amendment, and must be signed by him. Such notice shall state his address for service in the United Kingdom, and shall be accompanied by an unstamped copy.

54. On receipt of such notice the copy thereof shall be transmitted by the comptroller to the applicant.

55. Within fourteen days after the expiration of one month from the first advertisement of the application for leave to amend, the opponent may leave, at the Patent Office statutory declarations in support of his opposition and on so leaving shall deliver to the applicant a list thereof.

56. Upon such declarations being left, and such list being delivered, the provisions of Rules 38, 39, 40, 41, and 44 shall apply to the case, and the further proceedings therein shall be regulated in accordance with such provisions as if they were here repeated.

57. Where leave to amend is given the applicant shall, if the comptroller so require, and within a time to be limited by him, leave at the Patent Office a new specification and drawings as amended, to be prepared in accordance with Rules 10, 30, and 31.

58. Where a request for leave to amend is made by or in pursuance of an order of the Court or a judge, an official or verified copy of the order shall be lett with the request at the Patent Office.

59. Every amendment of a specification shall be forthwith advertised by the comptroller in the official journal of the Patent Office, and in such other manner (if any) as the comptroller may direct.

(9) HADDAN'S PATENT. [1885]

In the absence of special circumstances, the amendment of a patent of earlier date will date from the 1st of January, 1884. (2 Griff. 12.)

(r) ASHWORTH'S PATENT. [1886]

a

In settling the conditions to be annexed to an amendment, the law officer would consider it a special circumstance if the patent had been used for the purpose of endeavouring to obtain monopoly larger than that which the specification as amended claims. If there is no special circumstance, the law officer will not deprive the patentee of the right which he has according to the settled rule of suing in respect of matters before the amendment, but after the 1st of January, 1884. (2 Griff. 6.)

(8) BECK AND JUSTICE'S PATENT. [1886]

An unopposed application to amend a specification of a patent for improvements in nozzles, for the escape of steam or gases under pressure, was refused as to an amendment which referred to the exhaust of gas engines, as these had not been mentioned in the original patent. Webster, A. G.: "The function of an explanation within sect. 18 is to explain more clearly what is necessary to understand the meaning of the patentee at the time he patented the invention. I do not think it is intended that he should put in subsequently ascertained knowledge." (2 Griff. 10.)

Amendment by Disclaimer.

(t) SPILSBURY v. CLOUGH. [1842]

A grantee of letters patent, though having entirely parted with his interest, may enter a disclaimer. (2 Gale & Dav. 17; 6 Jur. 579; 2 Q. B. 466; 1 Web. P. C. 255.)

(u) WALLINGTON v. DALE. [1852]

A grantee had assigned his letters patent before the expiration of the six months within which the specification was to be filed, and after this assignment disclaimed part of the title of the letters patent:-Held, that the disclaimer was valid as soon as it was entered of record. (7 Exch. 888; 23 L. J. Ex. 49.)

(v) In re GARE'S PATENT. [1884]

The 18th section of the Act of 1883 does not affect the jurisdiction of the Master of the Rolls, to allow an amendment in a patent specification which has been filed under sects. 27 and 28 of the Patents Act of 1852, or has otherwise become a record. So long as it is in the Patent Office, and before the patent is sealed, any one applying for amendment must proceed under sect. 18 of the Act of 1883. (26 Ch. D. 105; Griff. 309.)

(w) CODD'S PATENT. [1884]

At the time when the patentee applied for leave to amend, there were two actions pending in respect of the patent, and in only one of these had leave to apply been obtained from the Court under sect. 19-Held by the Comptroller-General, that leave must also be obtained in the second action. (Griff. 305.)

(x) WINTER v. BAYBUT. [1884]

An action for infringement having been commenced in the Palatine Court and the pleadings having been closed, the plaintiffs applied to the Vice-Chancellor for liberty to apply under sect. 19 for leave to disclaim. The Vice-Chancellor being of opinion that the words, the Court or a judge, must mean a judge having power to try for infringement, held that he had jurisdiction to give liberty to apply, and gave liberty on the terms, that the plaintiffs should pay all the costs of the action up to date. (1 O. R. 77.)

But now see Proctor v. Sutton Lodge Chemical Company. (5 0. R. 184.) The Palatine Court is not "a Court or a judge" within the meaning of the Patents Act, 1883. See p. 392 (y).

(y) JONES'S PATENT.

Sect. 18 was intended to apply to the amendment of specifications after they had become public property; any other amendments must be dealt with under sects. 7 and 9. (Griff. 313.)

(z) DART'S PATENT.

The Comptroller-General has power under sect. 7 (1) to order an amendment of the title in the application, if in his opinion the title does not sufficiently indicate the invention described in the provisional specification; but if the applicant merely desires to omit part of the invention described in the original title and provisional specification, he may do so without amendment by a proper disclaiming clause in his complete specification, or may lodge a complete specification omitting the part desired to be left out, and the Patent Office may permit the original application and provisional specification to be amended accordingly, provided the amendment is confined to excision only. (Griff. 307.)

(a) SINGER v. HASSON. [1884]

Sect. 19 applies to an action for infringement, which was pending at the passing of the Act, and the Court has power in such an action to give the plaintiff liberty to apply for leave to amend. (50 L. T. 326.)

(b) CROPPER v. SMITH (No. 2). [1884]

In an action for infringement of a patent, the plaintiffs obtained a judgment against the defendants, S. and H.; but on appeal that judgment was reversed against S., but upheld against H. The plaintiffs afterwards applied, under sect. 18 of the Act of 1883, to amend their specification by way of disclaimer. Subsequently H. appealed to the House of Lords against the decision of the Court of Appeal. The Comptroller-General declined to proceed with the plaintiffs' application, which was opposed until the opinion of the Court had been taken under sect. 19, as to whether the appeal to the House of Lords was a pending litigation within sect. 18, sub-s. 10, and the plaintiffs took out a summons that they might be

at liberty to disclaim :-Held that the words, "other legal proceedings in relation to a patent," in sect. 18, subs. 10, refer to a proceeding for the revocation of a patent, and that an "action for infringement... pending" means an action before judgment and the summons was dismissed.1 (28 Ch. D. 148.)

(c) COCHRANE'S PATENT. [1885]

An applicant for the grant of a patent which was opposed applied for leave to amend: -Held by the Comptroller-General that the application for leave to amend should be heard before the application for the grant, and that the latter was not a "legal proceeding" within the terms of sect. 18, subs. 10-Held, further, by the law officer that the amendment asked for should be allowed, the effect being to confine the invention to a particular class of slag boxes, which was included with others in the previous claim. (Griff. 304.)

(d) BELL'S PATENT. [1887]

It is not competent for a member of the public to set up as a ground of opposition to a proposed amendment, that the patent as amended would still be for substantially the same invention as that described in a prior patent. (2 Griff. 10.)

(e) HAMPTON & FACER'S PATENT. [1887]

A disclaimer cannot be permitted which imputes to former similar patents a want of novelty which is not proved to exist. (2 Griff. 13.)

(f) In re HALL. [1888]

An action having been commenced, under sect. 32 of the Patents Act, 1883, for an injunction to restrain patentees from issuing threats, the patentees brought a cross action for infringement. The patentees then applied in the cross action, and obtained leave from Kay, J., under sect. 19, to apply to the Comptroller-General for leave to amend their specification by way of disclaimer. Upon an application for a writ of prohibition to the Comptroller-General, to prevent him from hearing the application, on the ground that there was " a legal proceeding in relation to the patent pending" within the meaning of sub-s. 10 of sect. 18:-Held, that Kay, J. had jurisdiction to make the order, and the prohibition was refused.

It is clear that the procedure under sect. 18 is meant to apply to cases when leave is given by a judge under sect. 19, and a judge has power to give such leave in one legal proceeding, although there may be other legal proceedings pending. (21 Q. B. D. 141; 5 O. R. 306.)

(g) REG. v. ATTORNEY-GENERAL. [1888]

An application for a rule nisi, for a prohibition to prevent the Attorney-General proceeding with an application under sect. 18

See now 51 & 52 Vict. c. 50, s. 5.